Sunday 2 March 2008

Darren Olivier

Lessons from Uganda trade mark decision

A High Court judge in Uganda recently held in favour of Anglo Fabrics & ano that Africa Queen & ano were infringing their registered trade mark ‘Mekako’ and passing off their medicated soap product. The plaintiffs were granted the injunction and the defendants ordered to pay SHs 10,000,000 (approximately $5800) plus costs (In The High Court Of Uganda At Kampala (Commercial Court Division) Anglo Fabrics (Bolton) Ltd And Ahmed Zziwa V African Queen Ltd And Sophy Nantongo). The case is interesting:

a. Speed: the case was filed on 16 October 2006 and judgment handed down on 22 February 2008. 16 months is not bad for a full trial.

b. Assignments: “an assignment [of a trade mark] is only valid to confer title after registration with the Registry of Trademarks” an unchallenged quote of the Assistant Registrar, International Property Rights, Ministry of Justice which the judge accepts. This has significant implications for brand owners acquiring or disposing of their trade marks who may best be advised to include a separate assignment recordal document (duly stamped) in their completion bundles, for immediate recordal in Uganda.

c. The tests for both infringement and passing off will be familiar enough to common law lawyers. For example, the Judge was guided by the five pointers in the English case of Reckitt & Coleman Ltd –Vs- Borden In (aka the Jiff Lemon case) for determining passing off. However, in applying the tests, the judge held that “[trade mark] infringement is analogous to the tort of fraud.” Fraud generally requires intent (which is absent in the normal test for trade mark infringement) and is a crime (which trade mark infringement, excluding counterfeiting, is not). The Judge was also able to establish passing off in a short paragraph, apparently, without reference to reputation in the getup. Getup, on the other hand, appears to form part of the Judge's reasoning under the infringement test.

d. The Judge acknowledged that Uganda is an ARIPO member state and appears to infer that a mark which designated Uganda would be enforceable, ignoring possible shortcomings of ARIPO. See earlier posting here.

e. The Court ordered that interest would be payable at the rate of 25% per annum. Darren Olivier

Darren Olivier

Darren Olivier

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