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China New Future (Uganda) Ltd v Hewlett Packard Development Co. L.P (Civil Appeal No. 130 of 2014)

Court of Appeal · [2025] UGCA 258 · 2025 Appeal Dismissed ✦ AI-generated summary ↓ Download
Jurisdiction
Uganda
Case Type
First civil appeal from High Court judgment in a trademark infringement and passing off suit
Decision
Appeal dismissed; the High Court judgment finding trademark infringement and passing off, and the award of general damages, upheld

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Holding

On a first appeal, the Court of Appeal dismissed the appeal. It held that the appellant's imported toner cartridges, bearing a mark so nearly resembling the respondent's registered HP trademark and imported without licence or consent, were counterfeit and infringed the trademark under section 36(2) of the Trademarks Act 2010, and amounted to passing off. A supplier's assurance that the goods were genuine was no defence, and ignorance of their counterfeit nature was irrelevant. On damages, the court declined to interfere with the trial judge's discretionary award of UGX 20,000,000 general damages, there being no showing it was inordinately high or based on a wrong principle. Appeal dismissed with costs.

Facts

The respondent was the registered proprietor in Uganda of two HP Logo trademarks (Nos. 40468 and 40471) in classes 02 and 16, in particular for printers and cartridges, and had long manufactured, sold and distributed printers and cartridges under the HP and Hewlett Packard marks, acquiring reputation and goodwill. Around 27 July 2013 the appellant, without the respondent's licence or consent, imported into Uganda a container of toner cartridges bearing the HP mark, declared to customs as chemical preparations for photographic use. URA customs officers and an HP expert verified the consignment and found that, although the cartridges resembled genuine HP products in labelling and packaging, they differed from the originals and were counterfeit. The appellant claimed it had bought the goods from a supplier who assured it they were genuine, that the toner boxes were opened in its absence and possibly tampered with, and that it sought to re-export them. The appellant held no registered trademark for HP products and did not buy from an HP factory.

Issues

  1. Whether the learned trial Judge erred in holding that the appellant's imported goods were counterfeit when this had not been proved.
  2. Whether the learned trial Judge erred in awarding UGX 20,000,000 as general damages when no damages had been proved.

Orders

  • Appeal dismissed.
  • Costs of the appeal awarded to the respondent.

Key headnotes

Trademarks — Infringement — Use of a mark nearly resembling a registered trademark
Importing and selling goods bearing a mark identical with or so nearly resembling a registered trademark as to be likely to deceive or cause confusion, without being the owner or a registered user, infringes the registered owner's exclusive rights under section 36(2) of the Trademarks Act 2010.
Passing Off — Protection of goodwill — Misrepresentation
No trader may represent or sell his goods as the goods of another; passing off protects the goodwill of a business against injury caused by such misrepresentation, and is preserved by section 35 of the Trademarks Act 2010 independently of trademark infringement.
Passing Off — Innocent importation — Irrelevance of ignorance
Passing off may be deliberate or unintentional, so a defendant's ignorance that the goods are counterfeit, or a supplier's assurance that they are genuine, is irrelevant and provides no defence to liability.
Trademarks — Proof of counterfeit goods — Evidential burden
An importer's assertion that it obtained goods from a source who assured it they were genuine is not, by itself, evidence that the goods are genuine; unexplained similarity of marks and packaging to a registered proprietor's products, together with expert verification, may establish that the goods are counterfeit.
General Damages — Appellate interference with discretionary award
An award of general damages is discretionary, and an appellate court will interfere only where the award is inordinately high or low, or where the trial judge proceeded on a wrong principle or misapprehended the evidence in a material respect.
First Appeal — Duty of the first appellate court to re-appraise evidence
A first appellate court has a duty to re-evaluate the evidence and reconsider the materials before the trial judge and reach its own conclusions, while making due allowance for not having seen or heard the witnesses.

Legislation cited (7)

  • Trademarks Act 2010 s.1
  • Trademarks Act 2010 s.35
  • Trademarks Act 2010 s.36(1)
  • Trademarks Act 2010 s.36(2)
  • Judicature Act Cap 13 s.10
  • Judicature (Court of Appeal Rules) Directions SI 13-10 r.30(1)(a)
  • Judicature (Court of Appeal Rules) Directions SI 13-10 r.100(6)

Cases cited (10)

  • Kifamunte Henry v Uganda (Criminal Appeal No. 10 of 1997)
  • Father Narsensio Begumisa & 3 Ors v Eric Tibebaga (Civil Appeal No. 17 of 2002)
  • Frank Reddaway Ltd v Banham [1896] AC 199
  • Leather Cloth Co Ltd v American Leather Cloth Co Ltd (1865) 11 ER 1435
  • Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
  • Haji Asuman Mutekanga v Equator Growers (U) Limited [1996] UGSC 12
  • Byabalema & 2 others v UTc (1975) SCCA NO. 7 of 1993
  • Star Industrial Co. Ltd v Yap Kwee Kor (1976) FSR 256
  • Erven Warnink BV v Townend & Sons (Hull) Ltd [1979] AC 731
  • Burgess v Burgess (1853) 3 De G M & G 896
Source: this page presents Wakilii’s issue analysis and metadata for a publicly reported Ugandan judgment. Any AI-generated summary is marked as such. Judgment text is sourced from the Uganda Legal Information Institute (ulii.org). Wakilii is not affiliated with ULII.