Saudia Arabian Airlines Corporation v Saudia Kenya Enterprises Limited (Civil Appeal 47 of 1984) [1986] KECA 73 (KLR)
The bottom line
#Kenya's Court of Appeal confirmed that any trade rival harmed by a registered trade mark can ask for its removal, even without owning a registered mark.
What this practically means
#Executive summary
#Questions the Court framed
#The issues the Court set itself to decide, in its own words.
- 1.Whether the appellant, not being the registered proprietor of the trade marks, qualified as a 'person aggrieved' entitled to apply under sections 29 and 35 of the Trade Marks Act (Cap 506) for removal of the respondent's registered marks
- 2.Whether the learned judge of the High Court exceeded the scope of the appeal from the deputy registrar's ruling on the preliminary objection
- 3.Whether this Court has jurisdiction to set aside the certificates of validity granted by the learned judge under section 47 of the Trade Marks Act
Key legal issues
#Who is a 'person aggrieved' under section 35(1) of the Trade Marks Act
A trade rival in the same or connected trade whose interests would be damaged by the wrongful registration is an aggrieved person; the concept excludes mere busybodies and depends on the facts of each case.
The Act does not define 'person aggrieved', so the court drew guidance from English authorities, notably Lord Pearce in Daiquiri Rum Trade Mark and Lord Herschell in Powell's Trade Mark. It distilled guiding principles: no exhaustive definition is possible; public policy favours a correct register; anyone in the same trade dealing in the same articles is prima facie aggrieved; a person without a trading interest is not; each case depends on its own facts. On those principles SAAC, as a rival travel promoter in Kenya, qualified as aggrieved for the purposes of section 35.
Whether the High Court judge exceeded the scope of the appeal from the preliminary objection
He did; the judge decided the 'aggrieved person' question and granted certificates of validity when the only issue decided by the deputy registrar was the preliminary objection, so his decision had to be set aside.
The deputy registrar had decided only the preliminary objection, answering that an owner of an unregistered mark could take rectification proceedings as an aggrieved person. The concept of an aggrieved person was not part of the preliminary objection and is not justiceable on a preliminary objection without agreed facts. The judge wrongly made it the whole issue, made findings the registrar had not been asked to make, and granted certificates of validity under section 47 before the applications were heard. The appeal therefore exceeded its bounds and the decision fell to be set aside and the matter remitted.
Whether this Court could interfere with the certificates of validity granted by the High Court
Yes; the Court of Appeal has jurisdiction under section 3(2) of the Appellate Jurisdiction Act and rule 31 of the Court of Appeal Rules to reverse the certificates because their grant was not a matter in the appeal before the judge.
SKEL argued, relying on Haslam v Hall, that there was no appeal from certificates of validity. Kneller JA distinguished Haslam as an English patent case turning on the English Judicature Act 1873. In Kenya, section 3(2) of the Appellate Jurisdiction Act vests in the Court of Appeal all the powers of the High Court for purposes of an appeal, and rule 31 permits the Court to confirm, reverse or vary the decision below with incidental orders. The certificates had been granted on an appeal from a preliminary objection before the validity of the marks was decided, so they were wrongly granted and would be reversed.
Whether an owner of an unregistered trade mark may bring rectification proceedings against a prior registrant
Yes, as the deputy registrar held; an aggrieved person may seek rectification even where he is not the registered owner of a mark, and such applications are not infringement proceedings.
The deputy registrar's ruling answered the preliminary objection by holding that an aggrieved person could take rectification proceedings under sections 29 and 35 even where he is not the owner of a registered mark, and that section 5 was irrelevant because the proceedings were not for infringement. That ruling was correct and should not have been disturbed; the applications should now be heard on their merits by the deputy registrar.
Legal principles established
#- A trader in the same field as the registered proprietor who would be hampered by the registration is prima facie a 'person aggrieved' entitled to apply for rectification, even if not the registered proprietor of the mark.
- Whether a party is an 'aggrieved person' is a mixed question of fact and law that generally cannot be justiceable on a preliminary objection without clearly defined agreed facts.
- An appellate court's jurisdiction over a first appeal extends to every part of what the High Court did, including incidental certificates, under section 3(2) of the Appellate Jurisdiction Act and rule 31 of the Court of Appeal Rules.
- An appeal must be confined to the issues actually decided below; a first appeal judge who decides matters not before him exceeds the bounds of the appeal and his decision will be set aside.
Court orders
#- 1.Appeal allowed with costs here, in the High Court and before the deputy registrar of trade marks
- 2.Judgment and orders of Mr Justice Cockar set aside
- 3.Deputy registrar of trade marks ordered to proceed with the hearing of the application by SAAC for the removal of the trade marks from the Trade Marks Register from where he left off
- 4.SKEL's notice of grounds for affirming the decision of the learned judge rejected, with costs to SAAC
- 5.Certificates of validity granted under section 47 of the Act reversed
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya, Nairobi
- Jurisdiction invoked
- Section 3(2) of the Appellate Jurisdiction Act (Cap 9) and rule 31 of the Court of Appeal Rules
Quotable passages
#Verbatim from the judgment, each located to the page it appears on in the official PDF — so these can be cited and checked directly.
Therefore I would allow the appeal with costs here, in the High Court and before the deputy registrar of trade marks, set aside the judgment and orders of Mr Justice Cockar and order the same deputy registrar to proceed with the hearing of the application by SAAC for the removal of the trade marks from the Trade Mark Register from where he left ofi.
Platt Ag JA and Gachuhi Ag JA agree so those are the orders of the court in this appeal.
it is clear that SAAC was substantially interested in having each mark removed from the register.
Unless some very clearly defined issue on agreed facts is put to the court or Registrar, that concept is not justiceable on a preliminary objection.
It is clear that the appeal ought to have been restricted to the points of the objection only since that was all that had been decided.
this court so far as its jurisdiction permits has power to confirm, reverse or vary the decision of the High Court and make any necessary incidental or consequental orders.
Issues in the judgment
#The respondent's name is spelt inconsistently within the judgment ('Saudia Kenya Enterprises Limited' and 'Saudi Kenya Enterprises Limited'; signature block 'GACHURI' vs 'Gachuhi' in the text).
The case number of the appeal before the Court of Appeal is not stated anywhere in the judgment.
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Saudia Arabian Airlines Corporation v Saudia Kenya Enterprises Limited (Civil Appeal 47 of 1984) [1986] KECA 73 (KLR)", Case Analysis (1986). Civil Appeal (not stated in the judgment). Source: https://new.kenyalaw.org/akn/ke/judgment/keca/1986/73/eng@1986-03-12
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.