Last updated on August 16th, 2024 at 10:20 am
Topic: Trademark infringement, Passing off, UNBS standards and policy compliance, International trademark registration
Date of Judgment: 21 February 2008
Court: High Court of Uganda, Commercial Court Division
Case Number: HCT-00-CC-CS-0632-2006
Judge: Honourable Mr. Justice Yorokamu Bamwine
Summary Facts of the Case
The first plaintiff, Anglo Fabrics (Bolton) Ltd, was a UK-based company and the registered owner of the trademark “Mekako.” in respect of Soap.
The second plaintiff, Ahmed Zziwa, was the sole registered user of the Mekako trademark in Uganda.
The first defendant, African Queen Ltd, is a Ugandan company, and the second defendant, Sophy Nantongo, is its managing director.
The plaintiffs alleged that the defendants were importing and selling medicated soap bearing the Mekako trademark without authorization, thus infringing on their trademark rights and engaging in passing off.
Legal Issues Before the Court
- Whether the first plaintiff has a valid claim regarding the suit.
- Whether the sale of the plaintiffs’ product contravenes UNBS standards, regulations, and policy.
- Whether the plaintiffs’ product is banned in the Ugandan market.
- Whether the product imported by the defendants infringes the plaintiffs’ trademark in Uganda.
- Whether the word Mekako is registered as an international trademark.
- Whether the soap imported by the defendants is under the international trademark, if any.
- Whether the plaintiffs are entitled to the reliefs claimed against the defendants.
The Decision of the Court
The Court found in favor of the plaintiffs on several key issues, including that the defendants had infringed on the plaintiffs’ trademark and engaged in passing off.
The court granted a permanent injunction restraining the defendants from using the Mekako trademark and ordered the destruction of the infringing soap.
The plaintiffs succeeded in demonstrating valid trademark rights and infringement because the mark was duly registered and active in Uganda and the defendants had no authorization to use it.
The Court made a visual comparison of the plaintiffs’ product and that of the defendant to arrive at the conclusion that they resembled each other and there was a risk consumers in the market could confuse them, hence the defendant was passing off the plaintiffs’ product.
The plaintiffs’ product did not contravene UNBS standards because, by the time the UNBS issued the prohibition orders in question, the product had already been authorized by UNBS to be on the Ugandan market.
The Court held that international trademarks are trademarks registered under international protocols like the Banjul Protocol for registration under the Africa Regional Intellectual Property Organisation (ARIPO) to which Uganda is a member state and Uganda would have to be a designated country for purposes of registration of the trade mark but found that in the present case there was no evidence Uganda was a designated country.
Key Quote: “The duty of the Judge in a case such as this is to decide, upon seeing the goods, whether the plaintiffs’ goods nearly resemble the ones complained of as to be likely to deceive or cause confusion in the minds of the public.” – Justice Yorokamu Bamwiine
Law Applied By the Court
- Trademarks Act, Cap. 217, Section 45; a trademark is conferred on registration in the Register of Trademarks of a person as a proprietor thereof. (Also see Section 34).
Counsel on Record
- For the Plaintiffs: Mr. Frederick Mpanga
- For the Defendants: Mr. Mohammed Mbabazi
Conclusion
Issued in 2008, this judgment is among the cases that broke ground for the protection of trademark rights in Uganda, particularly emphasizing the importance of registration of a mark in conferring its ownership and proving infringement thereof, the parameters of passing off, and the role of visual impressions in determining infringement/passing off.