Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd [2001] KECA 369 (KLR)
The bottom line
#Kenya's Court of Appeal threw out an injunction against 'Horseman' cigarettes, ruling judges must not decide trademark deception questions before trial.
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 learned judge applied the correct principles governing the grant of a temporary injunction
- 2.Whether the judge erred in deciding the issue of deceptive similarity of get-up at the interlocutory stage, a matter reserved for evidence at trial
- 3.Whether the respondent would suffer irreparable injury not compensable by damages
Key legal issues
#Correct test for temporary injunctions
The judge applied the trial standard of proof instead of the interlocutory tests and thereby erred.
The Court held that Onyango Otieno J decided the issue of deceptive similarity of get-up on his own visual impression, applying the burden of proof applicable at a full trial. That usurped the function of the trial court, since deception is a question of fact requiring evidence. The Giella v Cassman Brown conditions govern interlocutory applications, and the issue of deceptive similarity must be left to the suit.
Irreparable injury
Damages would adequately compensate the respondent if it ultimately succeeded at trial.
The Court examined the respondent's half-yearly statement showing that a 4% decline in turnover was attributable to economic conditions rather than the appellant's conduct, and that profits before taxation had improved. The respondent did not suggest the appellant could not meet any award of damages, so the irreparable injury condition for an injunction was not satisfied.
Get-up, colour and descriptive words
No one has a monopoly in a colour; whether get-up is deceptively similar is a matter of evidence for trial.
The Court noted it is common ground that no one has any monopoly in the colour red, and that there is no property in general descriptive words. Whether the Horseman get-up or word deceives the buying public, and whether Horseman is deceptively similar to Sportsman, must be established by evidence, not judicial visual impression at an interlocutory stage.
Legal principles established
#- At an interlocutory injunction application, a judge must not decide issues of fact such as deceptive similarity of get-up; those are matters for evidence at trial.
- The settled conditions for an interlocutory injunction are a prima facie case with probability of success, irreparable injury not compensable by damages, and the balance of convenience where the court is in doubt.
- There are no proprietary rights in a colour or in general descriptive words; deception and infringement are questions of evidence.
Court orders
#- 1.Appeal allowed with costs
- 2.Orders made by the superior court on 23rd June 1999 set aside
- 3.Respondent's application in the superior court dated 26th March 1999 dismissed with costs
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya (superior court)
- Not stated in the judgment
- Jurisdiction invoked
- First appeal to the Court of Appeal from an interlocutory ruling of the High Court (statutory appellate jurisdiction; no specific constitutional provision cited)
Relief refused
#Interlocutory injunction restraining the appellant from infringing the 'Sportsman' trade mark and passing off 'Horseman' cigarettes
The judge decided issues of fact reserved for trial and the respondent's loss, if any, would be compensable by damages
Costs
Appeal allowed with costs; the respondent's application in the superior court dismissed with costs.
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.
For these reasons we allow this appeal with costs and set aside the orders made by the superior court on 23rd June, 1999 and substitute the same with orders that the respondent’s application in the superior court dated 26th March, 1999 do stand dismissed with costs.
First an applicant must show a prima facie case with a probability of success. Secondly, an interlocutory injunction will not normally be granted unless the applicant might otherwise suffer irreparable injury which would not adequately be compensated by an award of damages. Thirdly, if the Court is in doubts, it will decide an application on the balance of convenience.
He went too far in deciding a temporary injunction application as the issue before him was of fact or facts and deciding such an issue in an interlocutory application may and does hamstring the trial court.
It is common ground that no one has any monopoly in the colour red.
the issue of deceptive similarity has to be decided in the suit
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd [2001] KECA 369 (KLR)", Case Analysis (2001). Not stated in the judgment. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2001/369/eng@2001-03-09
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.