QOTD: Jurisdiction in Patent Infringement Litigation: Industrial Property Tribunal or High Court?

In today’s Question of the Day (QOTD), a reader asks:
“In cases of infringement, I believe that a patent owner can elect to sue in the High Court, and then the court can either take the case or send it to the Industrial Property Tribunal. The patent owner can also elect to take the case directly to the Tribunal and skip the court altogether. Is this understanding correct?”
The Industrial Tribunal is the “court” of first instance. If a party is not satisfied with the decision of the Tribunal, it can proceed on appeal to the High Court. However in practice, some litigants proceed directly to court and if the opposing side raises an objection, some judges refer the matter back to the Tribunal. In some instances, depending on how the matter is presented by the counsel, some High Court judges decide to hear the matter.
In terms of a choice between High Court or Industrial Property Tribunal, the Industrial Property Act, 2001 clearly states that proceedings should start at the Tribunal. In this regard, consider the following sections of the Act:
105. Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”
106. On the request of the owner of the patent or the registered utility model or
industrial design, the Tribunal shall grant the following relief—
(a) an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
(b) damages; or
(c) any other remedy provided for in law.”

112. Where under this Act provision is made for appeals from the decisions of the Managing Director, all such appeals shall be made to the Industrial Property Tribunal…”
113.(1) For the purposes of hearing and determining appeals in accordance with section 112 and of exercising the other powers conferred on it by this Act, there is established an Industrial Property Tribunal which shall consist of the chairman and four members appointed by the Minister.”
In those cases where a judge decides to hear the matter at first instance, this decision is open to review and/or appeal either a misinterpretation of the Industrial Property Act or a decision made per incuriam depending on how the matter is presented to the court. In a High Court case reported here, the defendant raised a preliminary objection citing section 112 but not 113. However, in this case, the judge ruled in favour of the plaintiff and allowed the objection without considering section 113 of the Act as reproduced above. It appears that the courts tend to view such objections as encroaching on the unlimited jurisdiction of the High Court.
However, the intention of the legislature seems to be that the Industrial Property Tribunal would act as a specialised court that would take advantage of its expertise and experience to deliver speedy and sound rulings. The Tribunal has a full time Secretary employed by the KIPI as legal officer to carry out legal research and provide reports to assist the members of the Tribunal.
In the context of trade mark litigation, the Industrial Property Tribunal would be akin to the Registrar of Trade Marks who hears and determines opposition/expungement matters. In this regard, it is important to note that most of the trade marks rulings delivered by the Registrar are seldom challenged on appeal in the High Court. Even where trade mark matters are appealed to the High Court, very few of these matters are set aside by the court.

  1. Isaac Rutenberg
    Isaac Rutenberg
    According to Judge Ogola in Apex Creative Limited and Michael Odhiambo Obera v Kartasi Industries Ltd (2011): "Under Section165 (5) (b) and Section 162 (2) (a) and (b), the High Court is specifically denied jurisdiction in relation to employment and labour relations and the environment and the use and occupation of, and title to land. No mention is made of any other Tribunals or courts, and, in my view, if the Constitution intended to divest the High Court of jurisdiction in matters arising under Industrial Property Act 2001 it would have expressly said so. In my view, the fact that an Act of Parliament provides for a forum for determining dispute does not of itself divest the High Court of its original jurisdiction to try all civil matters. The High Court’s jurisdiction is here constitutional while the Industrial Court’s jurisdiction is provided under the Act. I therefore hold that this court has the jurisdiction to entertain this matter and to grant or refuse to grant the orders requested."
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