Saturday, 2 July 2011

Uganda High Court considers when Trade Mark Infringement & Passing Off actions prescribe

In Vitafoam (U) Ltd. Vs. Euroflex Ltd (Civil Suit No. 438 Of 2009) [2011] UGCommC 45 (2 June 2011) the Uganda High Court was asked to adjudicate on whether a claim based on passing off and trade mark infringement had prescribed because the plaint was brought before the Court more than six years after the alleged unlawful activity (the “Activity”) had commenced.

It is important that the Activity had not been a one off and had continued for a period of time after it had commenced. It also appears that matter had once been before the Courts but had not proceeded because of a failure to prosecute. A fresh action was then brought over six years after the initial Activity had taken place.

Mr Justice Madrama
Former state attorney and presiding judge, the Hon. Mr. Justice Christopher Madrama, set out the arguments before analyzing Ugandan and English law on the nature of passing off and trade mark infringement:

“So long as it is subsisting, a continuous sale of goods by passing off of goods as that of the owner of the trademark is actionable and is a continuing tort or breach or infringement of rights protected by the statute. The continuous breach of the right leads to an accrual of a fresh cause of action by each breach.”

“…the defendant’s objections that the suit is time barred is misconceived and is accordingly overruled with costs.”

Afro Leo commends the Judge for his thorough and thoughtful analysis of the law and wonders what Paul makes of the case.

Thanks to Saflii for the link to the case.

Posted by Darren Olivier

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