INTELLECTUAL PROPERTY DECEMBER / JANUARY 2017

Tuesday, January 31, 2017
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Welcome to the first issue of IP Monthly in 2017. We have recapped the biggest brands of 2016, and highlighted key developments in the Intellectual Property space in December and January. We are delighted to include a ruling which was a major victory for Coulson Harney at the Industrial Property Tribunal. We take this opportunity to wish you a prosperous 2017.

Notable victory for Coulson Harney in Fineline Industries Limited v Safepak Limited

The Industrial Property Tribunal of Kenya, in a precedent setting case, has ruled that a person would have the right to commence a revocation or invalidation action to challenge an industrial design even after the lapse of the statutorily provided time limitation of nine months under the Industrial Property Act. In a unanimous decision delivered on 9 December 2016, the Tribunal allowed an application by Fineline Industries Limited for extension of time within December 2016 / January 2017 03 which to bring an action for the revocation/ invalidation of Industrial Design No 646 registered at the Kenya Industrial Property Institute in favour of Safepak Limited.

The Tribunal ruled that a person who seeks the exercise of the Tribunal’s discretion in that regard would need to show genuine reasons for the delay in bringing the revocation or invalidation action. The Tribunal agreed that Fineline had acted with appropriate dispatch in the circumstances of the case in bringing the application for extension of time.

Additionally the Tribunal agreed that there were fundamental issues raised in the prospective revocation/ invalidation proceedings that gave basis for it to exercise discretion to extend time. Fineline had brought the revocation/ invalidation action under Section 103(1) and (2) of the Industrial Property Act.

The Tribunal agreed with Fineline’s arguments that these two provisions were distinct rather than continuous with Section 103(1) being without a time limit and Section 103(2) requiring that a revocation action be brought within nine months after registration of the industrial design (hence the extension of time application).

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