Hot Contestation of the Functus Officio Doctrine in Kenya

In a recent appeal to the High Court in Kenya concerning the THERMOS trade mark, the question whether the Registrar of Trade Marks (“the Registrar”) can revisit a decision previously made was considered.

The above issue emerged from the decision of the Assistant Registrar to restore a trade mark assigned to the Respondent, Thermos Hong Kong Limited, in circumstances where the trade mark had previously been removed on the basis of non-renewal by the registered owner (at the time). Prior to its removal, the same mark had been cited against an earlier application for the identical mark by the Appellant, Doshi Ironmongers Limited.

At the time of the removal of the THERMOS trade mark, the Appellant had again applied to register the same trade mark and that application had been examined and accepted. In the interim, the Respondent approached the Registrar with an application for restoration of the THERMOS trade mark assigned to it on the basis that the notices of renewal had been misaddressed (even though they were not directed to it in any event), rendering those notices and the removal of its THERMOS mark invalid. The Registrar accepted this argument and restored the Respondent as the registered proprietor of the THERMOS trade mark without any notice to the Appellant. On the strength of the restored trade mark, the Respondent opposed the Appellant’s application for registration of the THERMOS mark. The Appellant also defended the opposition on various grounds but was unsuccessful. It is the determination of the opposition to the Appellant’s trade mark application which led to this appeal and the need for a ruling on, inter alia, whether the Registrar had erred and misapplied the law at the time of restoring the THERMOS trade mark assigned to the Respondent.

It was argued by the Appellant that the decision to restore the THREMOS trade mark was irregular because restoration is only available to the person recorded as the registered proprietor at the time of removal of a mark. The Respondent was not recorded as the registered owner at the time, having only subsequently obtained a certificate of registration of assignment from the Registrar, which confirmed its acquisition of the THERMOS mark by assignment. In addition, the Appellant argued that the Registrar’s treatment of the restoration application as an administrative process without any notice to it denied it the right to participate and be heard at those proceedings. The Appellant ultimately claimed that the Registrar erred by sitting on appeal on the decision to first remove the THERMOS trade mark assigned to the Respondent.

In upholding this appeal, the court held that the exclusion of the Appellant from the restoration proceedings was a glaring denial of the right to be heard and a violation of natural justice. On consideration of the relevant Trade Mark Rules, the Court found that the Registrar did have the power to restore a removed mark and that the exercise of this discretion must accord with the notions of fairness and justice. Whereas the Registrar did indeed have the power to restore the THERMOS mark in this case, the decision to do so in circumstances where the Registrar had previously confirmed its decision to remove the mark, meant that the matter had been dealt with and not open to subsequent review or reconsideration by the Registrar.

The view of the Court was that, once the Registrar makes a decision, he becomes functus officio and the matter is only open for review by or appeal to the Court. The Court went on to state that the power to review one’s own decision is conferred by the law and that such power does not exist in all circumstances. A decision, once given, should be final and decisive.

The decision is interesting in that it exposes limitations to the power of the Registrar and also serves as a warning to trade mark owners to ensure timeous and proper recordal and renewal of their rights.

Kim Rampersadh
Partner | Trade Mark Attorney