Following two years of legal wrangling over a trademark infringement lawsuit against Housseni Kessell, a Lebanese businessman, Judge Chan-Chan Paegar of the Commercial Court on Wednesday ruled that the court lacked legal jurisdiction to determine the case.
Article 42(2) of the Intellectual Property Act of 2003 provides that the registered owner of a trademark shall in addition to any other rights institute court proceedings against any person, who infringes the mark by using it without the owner’s agreement, or who perform acts which make it likely that infringement will occur.
Also, from Article 2 (2) and 4 of the Act, Judge Paegar said the head of the Industrial Property Office, a director shall be appointed by the President to manage the affairs of the agency and enforce all of the provisions of the Act and the head shall be entrusted with all functions relating to the procedure for the grant of patents and the registration of industrial designs, marks and collective marks as specified in this act and regulation.
Besides those provisions, the Commercial Court was established in 2010 to hear and fast-track all commercial related matters with transparency and fairness.
BAF Trading Corporation, the company that filed the infringement lawsuit, included the Liberia Industrial Property Office (LIPO) and the Ministry of Commence (MOC) for allegedly facilitating the duplication of its trademark certificate to import “Pop Drink” in favor of HK Enterprise, owned by Housseni Kessell.
BAF had obtained the trademark for ten (10) years from the LIPO in 2010, of which BAF claimed that without any violation LIPO and MOC issued the same trademark to HK, Enterprise in 2014.
It was based on that alleged illegal transaction that BAF’s legal team asked Judge Paegar to declare their rights under the law.
But, Judge Paegar insisted that in keeping with the law the Liberia Industrial Property Office (LIPO) has original jurisdiction over the case, instead of the court, although he sat and listened attentively to the witnesses testimonies during the two years of legal battle.
“The administration of all matters relating to the issuance, revocation and safeguarding of industrial marks and patents devolves on the LIPO, and as such, this administrative agency by law, has original jurisdiction over and in all such matters,” Judge Paegar’s judgment emphasized.
For that purpose, the commercial court judge indicated, “LIPO is granted the police power to discharge such duties in collaboration with several ministries including justice, commence, finance and related agency of government.”
Judge Paegar quoted the Supreme Court opinions and said it provides, “in matters of over which a government agency has been expressly given original jurisdiction, a court is prohibited from exercising original jurisdiction.”
“Regarding this opinion,” the commercial court judge stated, “this court cannot assume and exercise original jurisdiction as is been urged by BAF Trading Corporation.”
Immediately, after Judge Paegar’s judgment, BAF import manager, Boubacar S. Balde briefed journalists that the judgment was a “mockery of justice.”
“Our lawyers, Cllr. Tiawan Gongloe rejected the judgment and he appealed it,” Balde said.
“If Judge Paegar knew that his court lacks jurisdiction why did he allow us to waste money and time bringing witnesses and hiring lawyers for the case,” the import manager wondered.
According to Balde, at the onset of the case, LIPO’s resource officer was subpoenaed by Judge Paegar to testify into the matter, which he did.
“The resource officer openly testified that there was no records in the data base of the agency to show the registration of HK Enterprise for the trademark, but the judge claimed that his court lacks jurisdiction to hear the matter,” Balde, tearfully explained.
He claimed that LIPO’s then acting director, Roberts Mezzeh, informed them that he revoked their trademark certificate and subsequently issued it to HK Enterprise, because the manufacturer of “Pop drink” terminated their contract.
“Even if that were true, does it warrant any reason for him to revoke our trademark and issue it to the Lebanese businessman because of the manufacturer terminating the contract?” he asked.
“Does a manufacturer have any right to our trademark legally acquired from reputable government agency like LIPO? Trademark is issued by law and nobody can revoke it unless there is a violation by the holder of that mark, but in our case there is nowhere LIPO showed that we violated the mark,” he claimed.
“I don’t know why Judge Paegar refused to rule into the matter after hearing its merit, but the Supreme Court will now decide who has the right to the trademark,” Balde confidently said.
“What surprises, us are that LIPO issued the trademark without our concern and without calling us to say, ‘somebody has applied for the trademark, but come so that we can all settle that matter.’ We explained everything to Judge Paegar; still he said we should go back to LIPO for further investigation,” Balde explained.
“The judgment now scares us business people to bring cases of this nature to the commercial court that was established to promote fair business practice,” BAF’s import manager noted.
“With all of our explanations – for Judge Paegar to say he does not have any original jurisdiction – that is unbelievable. But we will remain law-abiding until we can get a result either in favor or against.
“What we want is for justice to be done whether or not our trademark registration was done illegally, we just want to hear from the Supreme Court,” Balde said, hoping for justice.