The Commercial Case Law Index is a collection of judgments from African countries on topics relating to commercial legal practice. The collection aims to provide a snapshot of commercial legal practice in a country, rather than present solely traditionally "reportable" cases. The index currently covers 400 judgments from Uganda, Tanzania, Nigeria, Ghana and South Africa.
Get started on finding judgments that are relevant to you by browsing the topic list on the left of the screen. Click the arrows next to the topic names to reveal a detailed list of sub-topics. Most judgments are accompanied by a short summary written by subject-matter expert postgraduate students from the University of Cape Town.
In this case, the court considered the capacity (locus standi) and tests for making an application, under ss 45 and 46 the Trademarks Act.
In this case, the competitors were trading in respect of goods in class 9 (phones and other electronic goods). The court determined whether the applicant (a registered owner of the trademark TECNO in Hong Kong) had the locus standi to challenge registration of the trademark TECNO in Uganda. The court applied the rule that an agent of an owner of a registered mark in a Paris Convention member country had such capacity and held that the applicant had the capacity.
The court observed that the trademarks of the litigants were identical in terms of wording and in respect of the same goods. The court applied the rule that the mere adoption of a mark without bona fide use does not create trademark rights. The court noted that the respondent was using the mark for illegal purposes such as counterfeiting and passing off. Accordingly, the court ordered that the trademark be removed for non–use as per s 46 of the Trademarks Act.
The plaintiff was the registered proprietor for ‘Marie Classic Biscuits’. The defendant also sold biscuits, under the name ‘Aya Marie Biscuits’. The court considered whether the get-up of the defendant's product was similar to that of the plaintiff, whether it was likely to confuse average consumers, if there has been a passing off; and if so what remedies were applicable.
The court outlined the test for confusion about the get-up as concerning the perceptions of an average customer.
To establish ‘passing off’ the plaintiff must prove goodwill, misrepresentation and damage. Goodwill is the attractive force attached to the name, get-up or logo which brings in custom.
Misrepresentation is a false description made consciously or unconsciously by the defendant. Motive is not necessary. The onus for damages lies with the plaintiff; it must be proved that there was damage to goodwill.
The court found that the defendant’s get-up is similar to the plaintiff’s, the bulk of consumers identify the plaintiff's goods with the general impression of the red colour; in that light the plaintiff's goodwill is eroded. The court held that the red colour is not uniform for Marie biscuits around the world and therefore is not sufficient to satisfy the test of misrepresentation. The court also found that the plaintiff failed to prove actual damage to goodwill.
The court upheld the plaintiff's complaints and ordered an injunction to avoid the possibility of the defendant to reintroduce the products, and costs.
Trademark – Fraudulent registration of foreign trademark in Uganda
Copyright – Infringement of intellectual property rights
The plaintiff sought a permanent injunction against the defendant to prevent it from selling, offering for sale, or dealing in goods bearing the plaintiff’s registered trademark.
The court considered whether the defendant infringed the plaintiff’s registered trademark and whether the defendant was a bona fide user of the trademark. The court also considered whether the defendant had locus standi (standing) to challenge the registration of the plaintiff’s trademark.
Held, the defendant did not have locus standi to challenge the plaintiff’s trademark registration. Held, although the defendant was a trader, it could not claim innocence by virtue of advertising the plaintiff’s trademarks. The court stated that points of law had to be argued and evidence adduced by the plaintiff in so far as infringement is concerned in order for final judgement to be granted.
The court extensively examined existing trademark legislation and decided cases and concluded that the defendant did not have locus standi to challenge the plaintiff’s registration as the plaintiff enjoyed statutory protection due to registering its mark in Uganda first.
Interim injunction granted in favour of the plaintiff until the trial.
Trademark – Infringing mark resembles with the plaintiff’s mark – Infringement proved
This was a ruling on an application for a temporary injunction to restrain the respondent from using or trading in goods bearing the applicant’s registered trademark (moon with a logo).
The competitors in this case were in the same industry trading in textile materials and goods under the logos ‘Purple Moon Uganda Limited’ established in Uganda (applicant) and ‘Z moon Purple moon’ established in China (respondent). The court applied the principle of territoriality and held that the applicant was the registered owner of the trademark in dispute and had the right to stop the respondent from using the mark.
The court held that the respondent’s mark was infringing since it was similar in wording (moon) to the applicant’s registered mark in Uganda and was likely to deceive customers in the course of trade.
The court also determined whether the respondent had the capacity (locus standi) to challenge registration of a trademark in Uganda. The court applied the rule that an agent of an owner of a registered mark in a Paris Convention member country had such capacity. The court observed that the respondents were not agents of the two companies that had registered the trademark in China thus lacked capacity.
Accordingly, the court issued the injunction as prayed for and costs of the application subject to the outcome of the main suit.
The plaintiff was a registered owner of "Feathers" sanitary pads and claimed that the defendant imported "Featlhers" sanitary pads to be sold in Uganda. The court considered whether the plaintiff had exclusive use of a trademark which was infringed by importation and sale of a product.
The court held that s 36 of the Trade Marks Act grants exclusive use of a mark, which is infringed if a person who is not the owner of that mark uses it and causes confusion to average consumers. Civil proceedings may be instituted in terms of s 79(1). According to ss 79(3) and (4), the grant of an injunction does not affect a claim of damages, direct loss of sales and consequent loss of profits as well as the depreciation of the goodwill. Section 81(1) provides that one available form of relief is an account of profits to the plaintiff.
The court found that the plaintiff had exclusive use of the trademark. Despite the minor differences the goods were the same visually, conceptually, phonetically and belonged to the same class of goods. Therefore, concluded that the goods would likely confuse reasonable consumers. The defendants were guilty of infringement of the trademark by selling and importation of the sanitary pads. The plaintiff did not deal with the actual loss of sales, and no evidence was adduced to show that the counterfeit goods were circulating in Uganda.
The plaintiff's complaints were upheld. The court granted costs, ordered the destruction of the impounded goods, permanent injunction and general damages.
This is an appeal from the decision of the
Court of Appeal which reversed the decision of
the High Court upholding a ruling of the
Assistant Registrar of Trademarks. The
Registrar had allowed an application by the
appellant who sought to register "RANTAC"
as a trademark. The application had been
opposed by the respondent on certain grounds.
At trial of the appeal, the court considered
whether it was a third or second appeal. The
court held that in the High Court, the parties in
the present case followed the procedure
currently in use for filing suits, namely filing
summary of evidence, list of witnesses, list of
documents and list of authorities.
Consequently, I think that the notice of motion
heard and determined in the High Court was an
originating motion by way of institution of
court proceedings (a type of special suit in the
wider sense) resulting in a special order
appealable as of right under S.66 of CPA to
Court of Appeal. The appeal to the Court of
Appeal was therefore a first appeal. The
background is that the appellant was the
registered proprietor of a trademark and the
respondent applied to the registrar to use an
identical trademark. The registrar resolved the
matter in favor of the applicant and the
respondent appealed to the High court which
allowed the grounds. An appeal to the court of
appeal was decided in the favor of the
respondent hence the appeal at the Supreme
Court on grounds of effect of agreement in
India, reliance on Russian decision and the
identity of the trademarks.
The appellant registered proprietor of name sought an injunction against
the respondent registering a product name identical to the appellant’s.
The court commented on the violation of rules of natural justice when the
registrar received a respondent’s affidavit filed out of time and did not
allow the appellant to file his reply.
In this case the plaintiff sought court for recovery of damages, compensation and
royalties. This was on the ground that the defendant had infringed on his copy right
and for that matter in addition prayed for temporary injunction to restrain further
The plaintiff in this case sought for damages for breach of her Constitutional right to privacy, passing off, misrepresentation and false endorsement, breach of confidence and unjust enrichment for unauthorized use of her image in an advert.
The defendant denied the claim and stated that it had employed a third party to develop an advert for its new product, which third party had lawfully purchased all the photographs used in the advertisement from an internet website. The defendant thus argued that the plaintiff had no cause of action against it and that the suit should be dismissed with costs.
The third party too denied the allegations and stated that it had lawfully obtained them.
The issues that were raised for determination were, whether the plaintiff’s rights had been infringed upon by the defendant or the third party, whether they were in breach of confidence, privacy or liable for passing off, whether they had unjustly enriched themselves by use of the plaintiff’s image, and the remedies that were available.
This was an ex parte application in which the application sought for an Anton Pillar Order against the respondent.
The grounds for the application were that, the applicant had a strong prima facie case in the main suit to which the respondent was possessed with vital materials relevant to the main case, which material could have been destroyed so as to defeat the ends of justice.
The applicant further prayed to be allowed to enter upon the respondent’s premises to search for and seize any copyright infringing material.