This archive report was first published on 3 January 2020.
On January 3, 2020, a Mombasa High Court delivered a significant ruling in a trademark case between Doshi Iron Mongers and Thermos Hong Kong, a Chinese company previously owned by Thermos Limited, now rebranded as Household Containers Limited.
The case, which dates back to 2004, revolves around the ownership of the 'Thermos' trademark. Doshi Iron Mongers, a Mombasa-based company that manufactures insulated flasks, claimed ownership of the trademark, arguing that Thermos Hong Kong's use of the mark constituted unfair competition.
According to court documents, Doshi Iron Mongers successfully searched for the trademark on June 23, 2004, and was informed by the Registrar of Trademarks that it was available for registration. However, on July 12, 2006, the application to register the trademark was rejected due to its similarity to another trademark owned by Thermos Hong Kong Limited.
Following Thermos Hong Kong's failure to renew the trademark, Doshi Iron Mongers was registered as the proprietor of the trademark. On December 1, 2017, Hon Justice P.J. Otieno issued an injunction stopping Thermos Hong Kong from using the 'Thermos' trademark pending the hearing and determination of an appeal lodged by Doshi Iron Mongers.
Thermos Hong Kong defended its proprietorship over the trademark, claiming that it had been erroneously removed from the registry and that the notices of non-renewal had been sent to Household Containers Limited instead of Thermos Hong Kong.
However, in a ruling delivered on January 3, 2020, Hon Justice Patrick Otieno quashed the proceedings and directed the application for the trademark by the Kenyan firm to be considered. The judge claimed that the Assistant Registrar had no jurisdiction to reopen and hear an application that had been heard and determined by the registrar.
“Following that decision, it follows that what is undertaken without jurisdiction adds to nothing,” the judge said.
“The upshot is that this appeal succeeds in entirety and in terms of Section 52 of the Trademarks Act as read with Section 78 of the Civil Procedure Act. I do set aside the decision of the Assistant Registrar dated October 24, 2017, together with the decision of dated January 11, 2011, restoring the trademark no. 17003 (Thermos),” the judge further read.
