In Style Industries Limited v Sana Industries Co. Limited [2018] eKLR, the Plaintiff, Style Industries, sought an interim interdict and an Anton Piller order against the Defendant, Sana Industries, a long-time competitor of the Plaintiff.

Both parties trade in relation to, inter alia, hair extensions in Kenya.

The Plaintiff had acquired the mark VIP COLLECTION in class 26 in Kenya in relation to “Hair additions, hair pieces and braids, weaves and wigs” from a predecessor. The acquisition of that company’s assets effectively resulted in the Plaintiff acquiring the mark, VIP COLLECTION and the goodwill attaching to that mark.

The Plaintiff claimed that in October 2017 it noticed that its turnover in relation to products branded with the mark VIP COLLECTION had plummeted. This was attributed by the Plaintiff to the Defendant’s trade in similar products bearing the mark VIP PREMIUM COLLECTION.

The Plaintiff sought an interdict from the Court claiming that the Defendant’s conduct infringed its right to use the mark VIP COLLECTION to the exclusion of all others and that its conduct would continue unless restrained by the Court. The Anton Piller order was sought on the ground that it would allow the Plaintiff access to the Defendant’s premises and authority to seize products in its possession to which the mark VIP PREMIUM COLLECTION had been applied until the end determination of the suit.

In its defence, the Defendant argued that, like it, the Plaintiff had used the mark VIP COLLECTION as an indication of the quality of its goods rather than as a trade mark. It also alleged that the claim by the Plaintiff that it had suffered economic loss as a result of its conduct was a misrepresentation. In fact, it claimed that this could be attributed to the prolonged general elections which took place at that time. The Defendant also pleaded that the get-up of its VIP PREMIUM COLLECTION mark rendered it distinguishable from the Plaintiff’s mark VIP COLLECTION.

Despite this, the Court found:

  1. that the Plaintiff had made out a prima facie case of trade mark infringement;
  2. that the Plaintiff stood to suffer irreparable loss which could not be adequately compensated with an award of damages; and
  3. that the balance of convenience favoured the Plaintiff as it was entitled to use of the mark VIP COLLECTION. Indeed, the Defendant who had been using the mark VIP PREMIUM COLLECTION since 2008 did not attack the validity of effect of the Plaintiff’s mark.

However, the Court did not award the Anton Piller order. The Court found that the order, which is aimed at the preservation of evidence, would be pointless, as the Plaintiff did not make out any case which suggested that evidence would be destroyed by the Defendant. In addition, both parties had adduced evidence of the Defendant’s use of the conflicting mark in their papers.

The Court’s decision to refuse the Anton Piller order, which would otherwise have given the Plaintiff access to the Defendant’s business and therefore an unfair advantage that did not appear to be warranted, appears to be a sensible one. The decision on the merits also appears to be correct. Whether or not the Plaintiff’s trade mark would withstand an attack on the grounds that it is generic, which was pleaded by the Defendant, is perhaps a different question.