Case Title: Britania Allied Industries Ltd v Aya Biscuits (U) Ltd
Court: High Court of Uganda at Kampala, Commercial Division
Case Number: HCT-00-CC-CS-024 of 2009
Date of Decision: 9 June 2012
Judge: Hon. Justice Geoffrey Kiryabwire
Topics: Trade Mark Law, Passing Off, Trade Dress, Product Get Up, Packaging, Goodwill, Intellectual Property.
Background and Relevant Facts:
Britania Allied Industries Ltd, the plaintiff, brought a suit against Aya Biscuits (U) Ltd, the defendant, alleging passing off. The plaintiff claimed that it was the registered proprietor of a lapsed trademark “Marie Classic” and had been manufacturing and marketing biscuits under the name “Marie Classic” and “Big Maria.”
The trademark expired on 8 September 2010, leaving the plaintiff with unregistered rights in the mark and get up or trade dress and goodwill associated with its products.
The plaintiff accused the defendant of passing off its products by using a similar trade dress for its “AYA Marie Biscuits,” which could deceive or confuse consumers into believing that the defendant’s products were associated with the plaintiff.
The defendant denied these allegations, arguing that the similarities in get up or dress or packaging of the products ie the red colour packaging were generic in the biscuit industry, particularly for “Marie” biscuits owing to their russian royal history.
Issues Before the Court:
- Whether the trade dress (get-up) of the defendant’s biscuit is similar to that of the plaintiff’s product.
- Whether the similarity in the trade dress is likely to cause confusion among consumers.
- Whether there has been passing off by the defendant.
- What remedies are available to the parties.
Court’s Analysis and Findings:
- Similarity of Trade Dress: The court analyzed the trade dress or packaging of both products, focusing on the packaging’s color, design, and general appearance (get up). The court found the similarities between the plaintiff’s “Marie Classic” biscuits and the defendant’s “AYA Marie Biscuits,” particularly in the use of the color red and the overall get-up with the only difference being the logos. The court concluded that the similarities were not merely coincidental or generic but were sufficient to cause confusion among consumers of the biscuits who are typically unsophisticated.
- Likelihood of Confusion: The court applied the principle that the likelihood of confusion must be assessed from the perspective of the average consumer, who is likely to rely on general impressions rather than a detailed comparison of products. The court referenced the Brooke Bond Kenya Ltd. v Chai Ltd. [1971] EA 10 case, emphasizing that marks are remembered more by their general impression. The court found that the trade dress used by the defendant was likely to mislead consumers into believing that their product was associated with or originated from the plaintiff.
- Passing Off: The court considered the elements of goodwill, misrepresentation, and damage, which are essential in a passing off action, citing Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 All ER 873. The court found that the plaintiff had established significant goodwill in its product over nine years, and the defendant’s subsequent use of a similar trade dress constituted misrepresentation ie an intention to take advantage of the plaintiff’s goodwill in the market. The court therefore held that the defendant’s actions amounted to passing off.
Decision of the Court:
- The court found that the defendant’s trade dress was similar to that of the plaintiff and that the similarity was likely to cause confusion among consumers.
- The court held that there had been passing off by the defendant.
- The court granted a permanent injunction preventing the defendant from using a trade dress similar to that of the plaintiff’s product. However, the court did not extend this injunction to the production of “Marie” biscuits themselves, acknowledging that “Marie” is a generic type of biscuit.
- No damages were awarded due to the lack of concrete evidence showing a decline in the plaintiff’s sales attributable to the defendant’s actions.
Ratio Decidendi (Holding): The court held that the similarity between the plaintiff’s and defendant’s products in terms of packaging was sufficient to cause confusion and constituted passing off. The defendant’s use of similar colors and packaging was not justified by the alleged generic appearance of the marie biscuit in the industry and therefore amounted to misrepresentation, thereby infringing on the plaintiff’s goodwill. A trader must ensure that he sufficiently distinguishes the appearance of his product from a product already existing on the market.
Law Applied:
- Trade Mark Act, No. 17 of 2010: Section 35 preserves the right to bring a passing off action even where a trademark has lapsed.
- Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 All ER 873: Defined the elements necessary for a passing off claim.
- Brooke Bond Kenya Ltd. v Chai Ltd. [1971] EA 10: Addressed the likelihood of confusion in trade mark and passing off cases.
- Spalding & Bros v AW Gamage Ltd. (1915) 84 LJ Ch 449: Discussed misrepresentation and the protection of goodwill.
Quote: “Although copying the appearance of a product is not unlawful per se in the absence of infringing an intellectual property right, in terms of passing off, the defendant must always do enough to avoid the deception… The plaintiff’s get-up is predominantly red, with a picture of a biscuit and the plaintiff’s logo.
The defendant’s get-up on the other hand is similar in all respects except for the logo.” – Justice Geoffrey Kiyabwire
Counsel for the Parties:
- Plaintiff: Mr. Mugenyi
- Defendant: A.F. Mpanga Advocates
