Topic: Trademark infringement – only registered trademarks can form the basis of trademark infringement claims.
Date of Judgment: 11th November 2023
Court: High Court of Uganda at Kampala (Commercial Division)
Case Number: Civil Suit No. 917 of 2018
Judge: Hon. Lady Justice Anna B. Mugenyi
Summary Facts of the Case
Uganda Batteries Limited (UBL) filed this lawsuit against Nile Batteries Limited (NBL) for allegedly infringing its registered trademark “UBL” by using a similar mark “NBL” for their batteries. UBL claimed that this amounted to trademark infringement and passing off, and sought an injunction to prevent further infringement.
Nile Batteries Limited (NBL) denied any infringement, claiming that their mark “NBL” was distinct from that of “UBL”.
Main Legal Issue
- Whether the defendant infringed the plaintiff’s trademark and/or passed off its batteries as the plaintiff’s.
The Decision of the Court
Trademark Infringement and Passing Off: The Court examined the registered trademark of UBL and found discrepancies between the trademark presented in court and the one registered.
The registered trademark of UBL, as presented in evidence contained blue letters “UBL” with a power/lightning mark in the middle of the letter “B” and was bordered by a red rectangle.
However, the trademark presented in court by the plaintiff as the basis for their infringement claim featured a blue rectangle bordering the letters “UBL” instead of the red rectangle that was registered.
This discrepancy raised a significant question about whether the plaintiff had the legal standing (locus standi) to file the lawsuit since their claim was based on a version of the trademark that differed from the one officially registered contrary to Section 34 of the Trademarks Act of 2010.
Section 34 of the Trademarks Act states that: “A person may not institute proceedings to prevent or to recover damages for an unregistered trademark.”
Therefore, the Court held that UBL did not have locus standi to bring the suit as the basis of the claim was an unregistered trademark.
Additionally, UBL failed to present concrete evidence of trademark infringement or passing off, such as presenting the infringing batteries or warranty cards.
The Court therefore found no instances of confusion or evidence that NBL’s batteries were sold or distributed with the infringing mark.
The Court dismissed UBL’s suit, ruling that UBL had not proven its case of infringement against NBL.
Key Quote
“This Court has had the opportunity to look at the plaintiff’s registered trademark as presented in PEX1(b). The said trademark contains blue letters “UBL” with a power/ lightening mark in the middle of letter “B” and is bordered with a red rectangle that goes all round the said letters. This Court, however, observed that the trademark that the plaintiff appears to have based this suit on (see PEX4 and PEX5) is different from that which it registered with the Registrar of Trademarks as seen in PEX1(b) since it clearly indicates a blue rectangle (and not red) that borders the UBL letters therein. PW1 confirmed that the trademark the plaintiff registered was the one with a red rectangle and not the blue rectangle. This then raises the question as to whether the plaintiff has locus to bring this suit against the defendant in as far as alleged copyright infringement is concerned… From the above provision of law (Section 34), it became clear to this Court that the plaintiff’s registered trademark is not the basis of its claim as alleged and it, therefore, has no locus to file the present suit which is improperly before the Court.” – Lady Justice Anna B. Mugenyi
Law Applied
- Section 34 of the Trademarks Act
Counsel on Record
- For the Plaintiff: M/s S & L Advocates
- For the Defendant: M/s Arcadia Advocates
Conclusion
This case illustrates the principle that only registered trademarks can form the basis of trademark infringement claims.