A second bite at the (appeal) cherry, In Thermos Hong Kong Limited v Doshi Ironmongers Limited

In Thermos Hong Kong Limited v Doshi Ironmongers Limited (Civil Appeal (Application) E013 of 2021) [2022] KECA 544 (KLR), the Kenyan Court of Appeal had to determine whether a party had a second right to appeal an appellate decision from the High Court in relation to a trade mark dispute.

To recap, this case was first heard by the Assistant Registrar (“the Registrar”) who agreed to restore the trade mark THERMOS assigned to Thermos Hong King Limited (“Thermos”). On the strength of this restoration, Thermos opposed the application to register the mark THERMOS in the name of Doshi Ironmongers Limited (“Doshi”). Doshi defended the application but was unsuccessful.

Doshi subsequently appealed to the High Court which upheld the appeal and concluded that, after the Registrar had issued its decision, it became functus officio and that the matter must have then been reviewed by a Court.  Thermos sought to appeal this decision before the Court of Appeal.

Doshi objected to the filing of the appeal before the Court of Appeal on the basis that Thermos had no right to appeal to the Court of Appeal in terms of section 21(6) of the Trade Marks Act and Rule 117 of the Trade Mark Rules. Section 21(6) of the Trade Marks Act provides that the decision of the Registrar, relating to the opposition to registration of a trade mark “shall be subject to appeal to the court”. Doshi argued that “the court” in this instance referred to the High Court and not the Court of Appeal and that Thermos did not have a second right of appeal to the Court of Appeal.

In response, Thermos argued that its right of appeal was in terms of section 72 of the Civil Procedure Act and cited a case in which this court had permitted a second appeal to be filed  in a trade mark dispute on the basis of the same section. It further argued that the Trade Marks Act did not expressly exclude the possibility of a second appeal being filed from the High Court in respect of a decision made by the Registrar.

The Court of Appeal agreed with Thermos that there was no express provision in the Trade Marks Act that prevented a second appeal from being filed from the decision of the High Court. It further held there was no evidence that suggested that the legislature had intended for section 21(6) of the Trade Marks Act to make the High Court the court of last resort in matters relating to the registration of trade marks. It held that Thermos had shown that its right of appeal was well founded in law. The application was dismissed with costs.

The decision confirms that appellate trade mark decisions from the High Court in Kenya may be further appealed to the Court of Appeal. Not only does the Court have jurisdiction to hear such a case, but there is a right of appeal enshrined in statute.