Introduction
On 26th March 2026 the Industrial Property Tribunal revoked Utility Model No. 504, Top Flush Cistern, registered by the Kenya Industrial Property Institute on 6th August 2024, and held that it had never been validly registered. The decisive evidence of pre-filing public disclosure came in part from the registered owner itself.
What Happened
Kensplastic Limited obtained registration of a Top Flush Cistern on an application with a filing date of 16th May 2024. Big Five Hardware E.A Ltd, an importer of the same product, applied under section 103 of the Industrial Property Act to revoke the registration, producing sales contracts, invoices, packing lists, a bill of lading, an import declaration form, a Kenya Bureau of Standards Pre-Export Verification of Conformity and a certificate of conformity showing importation and sale in Kenya from 6th March 2023. Kensplastic Limited answered that it had been manufacturing and selling the same product in Kenya since 2016 and had registered only to protect existing rights.
What the Tribunal Held
- Utility models are tested for novelty and industrial application only. Section 82(1) requires that the invention be new and industrially applicable. Section 82(2) disapplies sections 22, 24, 42, 43, 44 and 60, so grounds based on want of inventive step, or on publication before the expiry of eighteen months under section 42, cannot succeed.
- There is no substantive examination. The requirement was removed by the Statute Law (Miscellaneous Amendments) Act No. 11 of 2017, which explains why no prior art search preceded registration. The Institute’s contrary explanation, that its practice rested on a notice in Industrial Property Journal No. 2014/04 of 30th April 2014, was held to be incorrect.
- Prior art is worldwide and includes commercial use. Under section 23(1) and (2) everything made available to the public anywhere in the world before the filing date, including by use, is prior art. Manufacture in China and importation, distribution and sale in Kenya before 16th May 2024 placed the invention in the public domain.
- The applicant’s own pre-filing trade destroyed its registration. The Respondent’s evidence of its own use before applying “would not work in favour of the Respondent … because it amounts to making the invention available to the public”. The registration was held invalid and revoked, with costs.
- An invalid registration cannot be infringed. Section 105 confines infringing acts to acts done in relation to a validly granted patent or utility model. “A patent or utility model that is not validly granted or registered is invalid ab initio hence incapable of being infringed.” No infringement claim arose in any event, none having been instituted under section 106.
- Prior user rights survive a later registration. Under section 56 the Requester, having imported and sold the product before the filing date, was a prior user whose rights are unaffected by the subsequent registration in favour of another person.
WHAT THIS MEANS FOR YOU AS A STAKEHOLDER
- Manufacturers and importers: file before you sell. Section 23(4) disregards your own disclosure only within the twelve months preceding the filing date. A product already in the market for years cannot be rescued by registration, and the certificate you obtain is a liability rather than an asset.
- Rights holders: a certificate is not a finding that your invention is new, and it does not make you the sole manufacturer of a product category. Because there is no examination, the first real novelty search may be your opponent’s, conducted in revocation proceedings at your expense.
- Anyone facing a late registration over goods they already trade: attack validity under section 103 rather than waiting to be sued. Revocation operates ab initio and removes the foundation of any seizure or enforcement action taken in the meantime.
- Advocates and IP agents: read section 82(2) before pleading. Grounds founded on inventive step or on the eighteen-month publication rule are unavailable in utility model proceedings, and infringement must be instituted under section 106 rather than raised in answer to a revocation request.
- Enforcement agencies and complainants: a registration certificate is not proof of a valid right. Seizures founded on an unexamined registration that is later revoked leave the complainant without any subsisting right to justify them, and genuine imports of a product in the public domain are not counterfeit.
- Every business: keep the trade documents. This case was decided on paper alone. Invoices, packing lists, bills of lading, import declaration forms and conformity certificates are what prove, years later, who was in the market first.
The utility model is Kenya’s cheapest registrable industrial property right, and this judgment is a reminder of the price of that cheapness: it is granted without examination and it can be taken away entirely.
LEGAL DISCLAIMER & CASE STATUS NOTICE: The registered owner, Kensplastic Limited, has preferred an appeal against the entire decision to the High Court of Kenya. Because the High Court subsequently dismissed the Appellant’s application for a stay of execution, the Tribunal’s declaration of invalidity remains fully active and in force pending the final determination of the substantive appeal.
This alert is provided free of charge for information purposes only; it does not constitute legal advice and should not be relied on as such. No responsibility for the accuracy and/or correctness of the information and commentary as set out in the alert should be held without seeking specific legal advice on the subject matter. If you have any query regarding the same, please do not hesitate to contact our Intellectual Property Department vide WAIPLaw@wamaeallen.com .
About the author
Janeirene specializes in real estate and securitization and banking and finance. She is a promising transactional advocate who has experience in real estate and securities law, transactional law and advisory and has handled complex transactions and advisories.
Peris is a results-driven and disciplined legal professional committed to delivering exceptional value to clients. With expertise across various legal fields, she provides strategic legal solutions tailored to diverse client needs. Her strong interpersonal skills, dedication, and meticulous approach to legal practice enable her to navigate complex legal matters effectively.
Denis Mutugi specializes in Commercial Litigation and Alternative Dispute Resolution.
Denis graduated with a Bachelor of Laws, LLB (Hons) from The University of Nairobi in 2021 and was admitted to the Roll of Advocates of the High Court of Kenya in the year 2023.
Denis has amassed a considerable wealth of experience in conducting legal research on various complex legal matters touching on Commercial, Insurance, Employment and Insolvency law and bankruptcy.
