Wakilii

Anglo Fabrics (Bolton) Ltd and Anor v African Queen Ltd and Anor (HCT-00-CC-CS 632 of 2006)

High Court · [2008] UGCOMMC 15 · 2008 Judgment for Plaintiff AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for trademark infringement and passing off
Decision
Judgment entered for the plaintiffs with permanent injunction restraining trademark infringement, delivery up of infringing goods for destruction, damages of UGX 10,000,000, and costs

Observed later treatment

No later-treatment classification is recorded for this judgment.

Citator coverage is limited to judgments in the Wakilii corpus and source-matched treatment records. Absence of a signal is not an assertion that the case remains good law.

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

Held that unregistered deeds of assignment did not affect the first plaintiff's standing to sue for trademark infringement, as registration in the Trademarks Register confers prima facie evidence of validity. The defendants' importation and sale of soap bearing the plaintiff's registered mark 'Mekako' without authorisation constituted trademark infringement and passing off. The plaintiffs' product complied with UNBS standards and did not contain prohibited substances. The defendants failed to prove any international trademark registration. Judgment for the plaintiffs with permanent injunction, delivery up for destruction, and damages of UGX 10,000,000.

Outcome

Judgment entered for the plaintiffs with permanent injunction restraining trademark infringement, delivery up of infringing goods for destruction, damages of UGX 10,000,000, and costs

Facts

The first plaintiff is a UK-registered company which registered the trademark 'Mekako' in Uganda on 7 October 1998, renewed for 14 years from 10 September 2004. The second plaintiff is the sole registered user of the mark in Uganda. The first defendant is a Ugandan company whose managing director is the second defendant. The defendants imported and sold soap in Uganda bearing the mark 'Mekako' without the plaintiffs' authorisation. The plaintiffs' soap was tested by UNBS and found not to contain prohibited substances including mercury. The defendants argued that two deeds of assignment executed by the first plaintiff in favour of Americ Enterprises Ltd undermined the plaintiffs' standing, but those deeds were unregistered and one post-dated the filing of the suit. The defendants also claimed an international trademark existed but adduced no evidence thereof. Their import documents showed the soap came from China, not Italy where they alleged the international mark owner was based.

Issues

  1. Whether the 1st plaintiff has a valid claim in respect of this suit.
  2. Whether the sale of the plaintiffs' product contravenes UNBS Standards, regulations and policy.
  3. Whether the plaintiffs' product is banned on the Ugandan market.
  4. Whether the product imported by the defendants infringes on the plaintiffs' trademark in Uganda.
  5. Whether the word Mekako is registered as an international trademark.
  6. Whether the soap imported by the defendants into Uganda is under the International trademark, if any.
  7. Whether the plaintiffs are entitled to reliefs claimed against the defendants.

Orders

  • Plaintiffs' claim upheld.
  • Permanent injunction granted restraining the defendants from using the words/mark MEKAKO on their soap and/or other products.
  • Order restraining defendants from infringing the plaintiffs' Mekako trademark.
  • Permanent injunction granted restraining the defendants from use and further continued use of packaging and product get-up similar to that used by the plaintiffs.
  • Infringing soap in the custody of Uganda Revenue Authority delivered up to the plaintiffs for destruction under the supervision of officials of the Uganda National Bureau of Standards.
  • General damages awarded to the plaintiffs in the sum of UGX 10,000,000.
  • Interest awarded at the rate of 25% per annum on the decretal sum.
  • Costs of the suit awarded to the plaintiffs.

Rules and key headnotes

Trademark Law — Standing to Sue — Effect of Unregistered Assignment
An unregistered deed of assignment does not divest the registered proprietor of a trademark of standing to sue for infringement where the assignment has not been registered with the Registry of Trademarks and the deed expressly reserves to the assignor the right to conduct pending infringement suits.
Trademark Law — Registration as Prima Facie Evidence
Registration of a person as the proprietor of a trademark in the Register of Trademarks is prima facie evidence of the validity of the registration and of all subsequent assignments and transmissions of the mark.
Trademark Infringement — Test of Likelihood of Confusion
The test of trademark infringement is the likelihood of confusion, being the probability that a reasonable consumer in the relevant market will be confused or deceived and will believe the infringer's goods come from, are sponsored or endorsed by, the complainant or that the two are affiliated.
Passing Off — Essential Elements
A valid cause of action for passing off requires: (i) a misrepresentation; (ii) made by a trader in the course of trade; (iii) to prospective customers or ultimate consumers; (iv) which is calculated to injure the business or goodwill of the trader as a reasonably foreseeable consequence; and (v) which causes or will probably cause actual damage to the trader's business or goodwill.
Trademark Law — Burden of Proving International Trademark Registration
A defendant who claims that goods imported for sale bear an international trademark must prove registration under the relevant international protocol and that Uganda was a designated member state for purposes of the trademark. Mere assertion is insufficient.
Trademark Infringement — Remedies
A trademark owner who successfully shows likelihood of confusion has a right of action in damages or for an account, and for an injunction to restrain the defendant for the future, including delivery up of infringing goods for destruction.

Legislation cited (2)

Cases cited (2)

  • Reckitt & Coleman Ltd v Borden Inc [1990] 1 WLR 491
  • Nanoomal Issardas Motiwalla (U) Ltd v Sophie Nantongo & Others (HCT-00-CC-CS-0430-2006)

Full judgment

↓ Download PDF

The original judgment as reported. Read the original PDF before relying on any passage.

Anglo Fabrics (Bolton) Ltd and Anor v African Queen Ltd and Anor (HCT-00-CC-CS 632 of 2006) [2008] UGCommC 15 (21 February 2008)
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.