Friday 6 June 2008

Darren Olivier

BIC Incovenienced

In Societe Bic Anonvyeme De Droit Francais (BIC) vs Wenbara Trading Company Ltd (Wenbara) and others (HCT-00-CC-CS-0704-2006) [2008] UGCommC 29 (4 June 2008) the High Court of Uganda Holden has held in favour of BIC against the importation of 852 cartons of counterfeit pens bearing the BIC trade marks and awarded them Shs.10,000,000.00 (about $6400) as general damages for inconvenience, and costs of the suit. The case is relatively straightforward and was uncontested. That said, it is the first time this blogger has come across a damages award based on inconvenience.

BIC was able to show that it was, at all material times, the registered owner of the BIC marks and that a consignment of countefeit BIC pens was detained by the Uganda Revenue Authority imported by Wenbara. BIC produced evidence that settlement terms with Wenbara could not be reached. The Judge had this to say:

"I am satisfied that the case for trademark infringement has been made out. The 852 cartoons of pens imported by the defendant no.1 are marked with the plaintiff trademark and logo. The goods were clearly not made by the plaintiff or its authorised agents though the goods were held out to be made by the plaintiff’s authorised agent. The plaintiff must succeed in its prayer that the said cartoons of counterfeit Bic pens be delivered up to the plaintiff for destruction."

The damages award is however worthy of further discussion. The Judge had found that as the goods had never been put on the market he was unable to see how BIC's goodwill or market had suffered and consequently did not award damages for such harm. Nonetheless the judge awarded damages based on the inconvenience caused by the legal suit: "the plaintiff and its authorised agent must have been put to great inconvenience. The agents are based in Kenya. The officials had to travel to and from Uganda on these matters prior to the institution of the suit. All that would have been unnecessary had the defendant no.1 not engaged in the conduct complained of."

Darren Olivier

Darren Olivier

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