REPUBLIC OF KENYA
IN THE HIGH COURT OF KENYA AT NAIROBI
MILIMANI LAW COURTS
COMMERCIAL AND TAX DIVISION
CORAM: F. MUGAMBI, J
COMMERCIAL CASE NO. E403 OF 2024
BETWEEN
VISION TECHNO TRADE CO LTD ………………..…… PLAINTIFF/APPLICANT
VERSUS
GULF AFRICA MACHINERY KENYA LTD ........... 1ST DEFENDANT/RESPONDENT
ANTI-COUNTERFEIT AUTHORITY …………. 2ND DEFENDANT/RESPONDENT

RULING

Background and introduction

1. The plaintiff, an importer and supplier of various machines, filed this suit against the defendants by way of a plaint dated 16th July 2024.

2. The plaintiff contends that some of the machines that it imports and supplies in the Kenyan market are manufactured in China, and branded with the mark “GIRASOL”. The plaintiff challenges the registration of the “GIRASOL” trademark in Kenya by the 1st defendant. The plaintiff argues that the two marks are strikingly similar in terms of spelling and pronunciation, which could create confusion in the Kenyan market. This confusion could lead members of the public to believe that the 1st defendant’s machines branded with the mark “GIRASOL” are those of the plaintiff or are supplied and sold in association or collaboration with the plaintiff, which is not the case and is detrimental to the plaintiff’s business.

3. The plaintiff’s claim against the 2nd defendant is based on the threat by the 2nd defendant to seize, remove and detain the plaintiff’s machines bearing the mark “GIRASOL” on the basis that they are counterfeit goods.

4. The plaintiff consequently prays for an order directed at the Registrar of Trade Marks to register the trade mark “GIRASOL”, a permanent injunction restraining the 1st defendant from dealing in the machines bearing the mark “GIRASOL”, from claiming trademark infringement or passing off or making threats or lodging objections to the 2nd defendant. The plaintiff also seeks a permanent injunction restraining the 2nd defendant from seizing, removing or detaining the plaintiff’s machines bearing the mark “GIRASOL” or declaring the plaintiff’s machines bearing the mark “GIRASOL” as counterfeit goods and for police assistance in enforcing some of the prayers.

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