Thermos Hong Kong Limited v Doshi Ironmongers Limited (Civil Appeal E013 of 2021) [2023] KECA 1436 (KLR)
The bottom line
#Kenya's Court of Appeal restored Thermos' trademark rights, ruling Doshi couldn't challenge an old restoration decision it ignored years earlier — miss a deadline and you lose the right to complain.
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 issue of validity of the restoration order had been settled by Tuiyott, J in Misc. Civil Application No. 19 of 2011 (JR) and was therefore caught up by res judicata or estoppel
- 2.Whether the respondent pleaded setting aside of the decision of the Assistant Registrar of 11th January, 2011 restoring the Appellant's Trade Mark registration as opposed to the decision of 24th October, 2017 in respect of opposition proceedings
- 3.Whether there was an error in the failure to address the issue of the registration of the Respondent's trademark 'THERMOS' in light of the Appellant's prior trademark registrations
- 4.Whether the impugned judgement was inconsistent and contradictory
- 5.Whether the issue of the Appellant's locus standi in the opposition proceedings was properly taken up before the learned Judge
- 6.Whether subsequent registration of the Respondent's TM pursuant to the decision of the learned Judge was proper without hearing the appellant
Key legal issues
#Whether the challenge to the restoration decision of 11th January, 2011 was barred by res judicata / issue estoppel
Yes. The Respondent could have attacked the restoration decision in the JR proceedings but did not; under Explanation 4 to Section 7 of the Civil Procedure Act it was estopped from raising the issue later, and the learned Judge erred in dealing with it.
The Court applied the extended doctrine of res judicata as restated in Gurbachan Singh Kalsi v Yowani Ekori and its common-law antecedents (Henderson v Henderson; Yat Tung Investment). A party must bring forward its whole case; matters which might and ought to have been raised are deemed directly and substantially in issue. The JR judgment had itself declared the restoration decision 'unchallenged and intact', and the Respondent's omission to seek quashing, whether deliberate or inadvertent, precluded a second bite at the cherry.
Whether the High Court could set aside the restoration decision of 11th January, 2011 when the appeal was against the ruling of 24th October, 2017
No. The decision of 11th January, 2011 was not the subject of the appeal; under rule 117 of the Trade Marks Rules such a decision must be challenged by motion within sixty days, and the Respondent was attempting to evade that rule.
Rule 117 of the Trade Marks Rules requires an appeal to the court to be made by motion within sixty days of the decision appealed against or within such further time as the Registrar allows. The Respondent never appealed the restoration decision within that period. The High Court therefore erred in dealing with and setting aside a decision whose challenge was not properly before it.
Whether the impugned judgment was inconsistent and contradictory
Yes. Having found the locus standi issue settled by the JR proceedings (res judicata), the Judge ought equally to have found the restoration issue settled, yet he dealt with it.
The Court found internal inconsistency: the Judge applied res judicata to bar revisiting the validity of the notice of opposition (upholding the Appellant's locus standi as determined in the JR) but then proceeded to disturb the restoration decision which the same JR judgment had pronounced unchallenged and intact. That inconsistency also gave rise to the Appellant's inference of bias, which the Court treated as part of the contradiction.
Whether the Judge erred in failing to address the Respondent's entitlement to registration in light of the Appellant's prior registrations
No error. The Judge was dealing with the Registrar's power to act, not the merits of registration, which remained pending before the Registrar.
The issue before the High Court was whether the Assistant Registrar had the power to restore the mark and conduct the proceedings as she did. The merits of the Respondent's registration application had yet to be determined by the Registrar, so the Judge's silence on the other six trademark registrations was not an error of law.
Whether the Appellant's locus standi ground was properly before the Court
No. The issue was resolved in the Appellant's favour below; a party cannot appeal a decision in its own favour.
The learned Judge found, consistently with the JR judgment, that Section 21(2) of the Trade Marks Act allows 'any person' to give notice of opposition, so the Appellant had locus standi. Under rule 77(3)(a) of the Court of Appeal Rules a notice of appeal must specify the part of a decision complained of; a ground attacking a favourable finding is an abuse of process.
Whether the subsequent registration of the Respondent's trademark without hearing the Appellant was proper
The Court declined to determine it: the registration was the Registrar's decision, made after the impugned judgment, was not subject matter before the High Court, and the Registrar was not a party.
A second appellate court deals only with errors of the High Court. The registration decision was that of the Registrar of Trade Marks, not the High Court; if improper, recourse lies elsewhere. Further, determining the action of a non-party without affording it a hearing would be prejudicial. The ground failed.
Legal principles established
#- On a second appeal, the Court of Appeal confines itself to matters of law only, and will not interfere with the findings below unless they considered matters they should not have, failed to consider matters they should have, or the decision is perverse.
- Res judicata in its extended sense bars not only matters actually determined but every point which properly belonged to the subject of earlier litigation and which the parties, exercising reasonable diligence, might have brought forward.
- A party may not, on appeal, take up a ground in respect of a decision that went in that party's favour; doing so amounts to an abuse of the court process.
- A statutory decision can only be challenged on appeal within the time prescribed by the applicable rule (here rule 117 of the Trade Marks Rules); a party cannot evade that stricture by challenging the decision under the guise of an appeal against a later decision.
Court orders
#- 1.The appeal is allowed
- 2.The judgment of the High Court (P J Otieno, J) made on 11th December, 2019 in respect of the three consolidated appeals being Mombasa High Court Civil Appeal Nos 251 of 2017, 252 of 2017 and 253 of 2017 is set aside
- 3.Substituted therefor an order dismissing the said High Court appeals with costs to the appellant
- 4.The appellant will also have the costs of this appeal
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya at Mombasa
- Mombasa High Court Civil Appeal Nos 251 of 2017, 252 of 2017 and 253 of 2017 (consolidated)
- Jurisdiction invoked
- Section 72 of the Civil Procedure Act (appeal from every decree passed in appeal by the High Court) - second appeal on matters of law only
- Consolidated with
- Mombasa High Court Civil Appeal Nos 251 of 2017, 252 of 2017 and 253 of 2017 (consolidated below)
Relief refused
#Appellant's request to invalidate the subsequent registration of the Respondent's TM Nos. 5964, 66337 and 66338
The registration was a decision of the Registrar of Trade Marks, who is not a party to the proceedings and was not heard; recourse lies elsewhere
Costs
The High Court appeals dismissed with costs to the appellant; the appellant will also have the costs of this appeal.
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 premises, we find merit in this appeal which we hereby allow. We set aside the judgement of the High Court (P J Otieno, J) made on 11th December, 2019 in respect of the three consolidated appeals being Mombasa High Court Civil Appeal Nos 251 of 2017, 252 of 2017 and 253 of 2017. We substitute therefor an order dismissing the said appeals with costs to the appellant.
The plea of res judicata applies, except in special cases, not only to points upon which the court was actually required by the parties to form an opinion and pronounce a judgement, but to every point which properly belonged to the subject of litigation, and which the parties exercising reasonable diligence, might have brought forward at the time.
Therefore, on a second appeal, the Court confines itself to matters of law only, unless it is shown that the Courts below considered matters they should not have considered or failed to consider matters they should have considered or looking at the entire decision, it is perverse.
To take up a ground of appeal in respect of a decision that went in favour of a party, in our view amounts to an abuse of the court process.
Ultimately the restoration decision is unchallenged and intact and there is a valid opposition lodged to Doshi's application.
Issues in the judgment
#The judgment inconsistently dates the restoration decision it discusses, referring to 11th January 2021 in one passage where the decision is elsewhere consistently dated 11th January 2011
The judgment quotes the JR judgment with internally inconsistent dates (publication of notice '30th November 2020' where context indicates 30th November 2010)
The Assistant Registrar's name is rendered inconsistently as 'Elvine Apiyo' and 'Elvin Opiyo' in different passages
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Thermos Hong Kong Limited v Doshi Ironmongers Limited (Civil Appeal E013 of 2021) [2023] KECA 1436 (KLR)", Case Analysis (2023). Court of Appeal Civil Appeal (Mombasa) arising from Mombasa High Court Civil Appeal Nos 251 of 2017, 252 of 2017 and 253 of 2017. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2023/1436/eng@2023-11-24
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.