Hygiene Bins Limited v Sanitam Services (E.A) Ltd [2015] KECA 379 (KLR)
The bottom line
#Kenya's Court of Appeal confirmed that ARIPO patents are enforceable in Kenya and that patent owners can get injunctions without proving irreparable loss.
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 respondent demonstrated a prima facie case with a probability of success at the trial
- 2.Whether the respondent demonstrated that it would suffer irreparable loss if the injunction was not granted
- 3.Whether the balance of convenience tilted in favour of declining the injunction
- 4.Whether the Court of Appeal should interfere with the learned Judge's exercise of judicial discretion
Key legal issues
#Prima facie case for interlocutory injunction in patent infringement
The affidavit evidence, including expert opinion evidence comparing the two bins, established a prima facie case with probability of success.
The respondent exhibited its Certificate of Grant of Patent No. AP773 and expert opinion of Moses Frank Oduori concluding that the appellant's bin was not different in design and operation of its opening mechanism from the patented bin. Prior decisions of the courts had also recognised the validity of the patent. The learned Judge applied the Giella principles and the Court detected no error in her exercise of discretion.
Irreparable loss as a condition for granting an injunction to protect a statutory patent right
Where a patent owner demonstrates infringement, sections 54 and 55 of the Industrial Property Act entitle it to an injunction without necessarily proving irreparable loss; the Giella second principle is 'not cast in stone'.
Section 54(1) gives the patent owner the right to preclude others from exploiting the protected invention, and section 55 expressly gives the owner the right to obtain an injunction to restrain such acts. The Court held that on the statute, proof of irreparable loss was not required before granting the injunction, and in any event the second Giella principle uses the word 'normally' and is not absolute.
Nature of interlocutory findings and judicial restraint on first appeal
Definitive-sounding language in an interlocutory ruling does not convert prima facie findings into final findings binding the trial judge; and the Court of Appeal will not interfere with discretion absent established error.
The Court observed that the learned Judge's language might have given the unfortunate impression of a final decision on the suit, but the findings remained prima facie findings which would not bind the trial Judge. It also reiterated the decades-old principle that the Court will not interfere with the exercise of discretion by a High Court judge save in exceptional circumstances, and found none of the enumerated grounds for interference present.
Legal principles established
#- An ARIPO-granted patent has the same effect in Kenya as one granted under the Industrial Property Act, and its owner is entitled to the statutory protection of sections 54 and 55, including the right to an injunction to restrain exploitation of the protected invention.
- Where a patent owner demonstrates infringement on an interlocutory application, the statutory right to an injunction may be enforced without proof of irreparable loss; the irreparable-loss condition in Giella is not cast in stone.
- The Court of Appeal will not interfere with a discretionary decision of a High Court judge unless one of the established grounds of misdirection, misapprehension of facts, wrong considerations, or plain wrongness is shown.
Court orders
#- 1.The appeal is dismissed with costs to the respondent
- 2.The interlocutory injunction restraining the appellant from infringing the respondent's patent No. AP773 remains in force pending the hearing and determination of the suit
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya at Nairobi, Milimani Commercial Courts
- HCCC No. 3 of 2008
- Jurisdiction invoked
- First appeal to the Court of Appeal under the Court of Appeal's appellate jurisdiction (the judgment does not cite a specific constitutional or statutory provision for its jurisdiction)
Relief refused
#The appellant's appeal against the grant of the interlocutory injunction
The respondent demonstrated a prima facie case with probability of success, and the learned Judge's exercise of discretion disclosed no error warranting appellate interference
Costs
The appeal was dismissed with costs (to the respondent)
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.
In the end and for the foregoing reasons, this appeal fails and it is dismissed with costs.
By virtue of section 59 of the Industrial Property Act 2001 (“the Act”), the patent had the same effect as if it had been granted under the Act. The respondent was accordingly entitled to the same protection given under section 54(1) of the Act.
It would appear from the language of sections 54 and 55 of the Act that the respondent need not have demonstrated that it would suffer irreparable loss unless the injunction was granted before the granting of the injunction.
The condition is therefore not cast in stone.
the use of definitive language does not detract from the fact that the findings were prima facie findings which would not bind the trial Judge and indeed even the same learned Judge if it fell upon her to hear the main suit.
Issues in the judgment
#The coram line reads '(Hon. Lady justice P.M. Mwilu) delivered by Lady Justice Martha Koome' in the header, but the body of the judgment repeatedly attributes the ruling to Mwilu J; the identity of the judge who delivered the ruling is internally inconsistent.
Key timeline
#Practical implications
#Frequently asked questions
#Later judgments citing this (3)
#Judgments in the corpus that rely on this one. Where the Court said how it treated the authority, that is shown.
- Macharia v Mwangi & 2 others (Environment & Land Case 39 of 2022) [2024] KEELC 1101 (KLR)[2024] KEELC 1101 (KLR)28 Feb 2024
- Samuel Kago Mungai Kimari & another v Miliam Wanjiru & 2 others [2013] KEMC 46 (KLR)[2013] KEMC 46 (KLR)30 Aug 2013followed
- KENYA UNION OF DOMESTIC, HOTELS, EDUCATIONAL INSTITUTIONS, HOSPITALS AND ALLIED WORKERS UNION [KUDHEIHA VASSOCIATION FOR THE PHYSICALLY DISABLED OF KENYA[APDK] [2013] KEELRC 262 (KLR)[2013] KEELRC 262 (KLR)30 May 2013followed
Cite this brief
#Cite this brief
Caselaw, "Hygiene Bins Limited v Sanitam Services (E.A) Ltd [2015] KECA 379 (KLR)", Case Analysis (2015). Civil Appeal No. 157 of 2011. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2015/379/eng@2015-09-25
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.