Guangzhou Tiger Battery (U) Ltd v Incargo Freight Agencies Ltd

Supreme Court · [2015] UGSC 124 · 2015 Appeal Dismissed ✦ AI-generated summary ↓ Download

Jurisdiction

Uganda

Case Type

Second civil appeal to the Supreme Court from the Court of Appeal, which had upheld the High Court's dismissal of a trade mark infringement and passing off suit.

Decision

Appeal dismissed; the dismissal of the appellant's infringement and passing off suit stands.

The full judgment

Read the complete, verbatim text of this judgment.

AI-generated summary. This summary was generated by AI from the full text of the judgment. It may contain errors or omissions — always read the source judgment before relying on it.

Holding

The appellant, registered user of the 'Tiger Head' trade mark, sued for infringement and passing off after the respondent imported Tiger Head batteries under a ministerial licence. The Supreme Court, on second appeal, held that the burden lay on the appellant to prove that the imported batteries were not of its manufacture and were deceptive; he who asserts must prove, and the difficulty of proving a negative does not shift that burden. The appellant adduced no expert evidence and did not produce the batteries for comparison, so neither infringement nor passing off was established. The importation was lawful under the licence. Finding no basis to disturb concurrent findings of fact, the Court dismissed the appeal with costs.

Facts

The appellant was, from 11 November 2007, the registered user in Uganda of trade mark No. 19462 for the words 'Tiger Head' for batteries. In May 2012 the respondent imported six containers of Tiger Head batteries from Yick's Industrial Limited, Hong Kong, which were held by the Uganda Revenue Authority. The appellant sued in the Commercial Court for infringement and passing off, alleging the batteries were counterfeit and not of its manufacture. The respondent relied on a ministerial import licence under Statutory Instrument No. 23 of 2011 permitting importation of Tiger Head batteries manufactured by Guangzhou Tiger Head Battery Group Company Ltd, China. The batteries were never produced in court or examined by an expert, and there was evidence that other traders dealt in Tiger Head batteries in Uganda. The High Court dismissed the suit and the Court of Appeal upheld that decision, prompting this second appeal.

Issues

Whether the Court of Appeal, as a first appellate court, properly re-evaluated the evidence on record.
Whether the burden of proof was correctly placed on the appellant to prove that the imported batteries were not of its manufacture.
Whether the respondent's importation of the Tiger Head batteries infringed the appellant's rights as registered user of the trade mark.
Whether the appellant proved passing off.
Whether the Supreme Court, on a second appeal, should interfere with the concurrent findings of fact of the two lower courts.

Orders

Appeal dismissed.
Costs of the appeal and of the courts below awarded to the respondent.

Key headnotes

Evidence — Burden of Proof — Party who asserts must prove; proving a negative

A party who asserts the existence of facts on which a legal right or liability depends bears the burden of proving those facts, and that burden does not shift to the opponent merely because proof of a negative is difficult.

Civil Procedure — Second Appeal — Concurrent findings of fact; duty of second appellate court

On a second appeal the Supreme Court does not re-evaluate the evidence afresh as a first appellate court would, and will interfere with concurrent findings of fact of the two lower courts only where they are shown to be grossly wrong or based on wrong principles of law.

Intellectual Property — Trade Marks — Infringement — Proof of likelihood of deception or confusion

To establish infringement of a registered trade mark the claimant must adduce evidence that the offending goods so nearly resemble the registered mark as to be likely to deceive or cause confusion among the public, and ordinarily must place the offending goods before the court for comparison.

Intellectual Property — Passing Off — Proof of goodwill, deception and confusion

Passing off requires the claimant to prove reputation or goodwill and that the defendant's get-up creates a deceptive or confusing resemblance leading consumers to receive the wrong goods; whether such resemblance and deception exist is in every case a question of evidence.

Intellectual Property — Trade Marks — Importation under ministerial licence

Importation of branded goods is not wrongful where it is carried out under a ministerial import licence permitting importation of the manufacturer's goods, and the licence does not restrict the source of the goods to the registered user's own factory.

Legislation cited (11)

Trade Marks Act 2010 s.1
Trade Marks Act 2010 s.12(1)
Trade Marks Act 2010 s.36(1)
Trade Marks Act 2010 s.36(2)
Trade Marks Act 2010 s.49(3)
Trade Marks Act 2010 s.79(1)
External Trade Act s.9
Evidence Act s.101
Evidence Act s.102
Supreme Court Rules r.29(1)
Court of Appeal Rules r.30(1)(a)

Cases cited (13)

J.K. Patel v Spear Motors Ltd (Civil Appeal No. 4 of 1991)
Milly Masembe v Sugar Corporation of Uganda [2002] 2 EA 434
Kifamunte Henry v Uganda [1997] LLR 72 (SCU)
Kifamunte Henry v Uganda (Criminal Appeal No. 10 of 1992)
Charles Bitwire v Uganda (Criminal Appeal No. 23 of 1985)
Banco Arabe Espanol v Bank of Uganda (Civil Appeal No. 8 of 1998)
Britania Allied Industries Ltd v Aya Biscuits (U) Ltd (HCCS No. 24 of 2009)
Zeneca Ltd v Vivi Enterprises Ltd (HCCS No. 842 of 1994) [1999] KLR 843
Reckitt & Colman Products Ltd v Borden Inc & Ors [1990] UKHL 12
Payton & Co. Ltd VS Snelling Lambarde & Co. Ltd [1901] A.C.
Reddaway v Banham [1896] AC 199
Parke Davis & Co v Opa Pharmacy Ltd [1961] EA 556
Haria Industries v P.J. Products Ltd [1970] EA 365

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.