Wakilii

Britania Allied Industries Ltd v Aya Biscuits (U) Ltd (HCT-00-CC-CS 24 of 2009)

High Court · [2012] UGCOMMC 61 · 2012 Judgment for Plaintiff — Injunction Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for passing off and trade mark infringement (trade mark claim dropped at trial)
Decision
Permanent injunction granted restraining defendant from using similar get-up; plaintiff's claim for damages dismissed

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court found passing off where the defendant used substantially similar red packaging and get-up for Marie biscuits to that of the plaintiff who had established nine years of market presence and goodwill. The court held that the similarity was likely to cause confusion among ordinary consumers and that the defendant ought to have done more to distinguish its product. A permanent injunction was granted restraining the defendant from using similar get-up but no damages were awarded as the plaintiff failed to prove actual loss.

Outcome

Permanent injunction granted restraining defendant from using similar get-up; plaintiff's claim for damages dismissed

Facts

The plaintiff, Britania Allied Industries Ltd, manufactured and marketed biscuits branded 'Marie Classic' and 'Big Maria' for approximately nine years, during which it established substantial goodwill in the market. The plaintiff had been the registered proprietor of trademark No. 26073 for 'Marie Classic' which expired in September 2010. The defendant, Aya Biscuits (U) Ltd, introduced its own Marie biscuits to the market in September 2009 under the name 'AYA Marie Biscuits'. The plaintiff alleged that the defendant's product packaging and get-up was substantially similar to its own, using the same predominantly red colour scheme, similar font for the word 'Marie', and similar pictorial representation of a biscuit. The defendant's products remained on the market until April 2010 when they were withdrawn. At trial, the plaintiff dropped its claim for trade mark infringement but maintained its passing off claim.

Issues

  1. Whether the get-up of the defendant's biscuit is so similar to that of the plaintiff?
  2. Whether the similarity is likely to cause confusion?
  3. Whether there has been a passing off?
  4. What remedies are available to the parties?

Orders

  • Injunction granted against the defendant using a similar get-up to that of the plaintiff.
  • The injunction does not extend to the production of the biscuit itself as it is a generic type of biscuit.
  • No award of damages.
  • Costs of the suit awarded to the plaintiff.

Rules and key headnotes

Passing Off — Elements — Goodwill, Misrepresentation and Damage
To succeed in a passing off action, the plaintiff must establish three elements: the existence of goodwill in the plaintiff's product, misrepresentation by the defendant calculated to injure that goodwill, and actual or probable damage to the plaintiff's business or goodwill.
Passing Off — Goodwill — Product Get-up and Packaging
Goodwill can subsist in a product's get-up, that is a container together with its shape, colour and appearance, where that get-up has become distinctive of the plaintiff's goods through use in the market.
Passing Off — Time Period for Establishing Goodwill
Nine years of market presence is sufficient time for a product to establish goodwill and reputation capable of protection in a passing off action.
Passing Off — Misrepresentation — Test for Confusion
The likelihood of confusion is assessed not by placing two marks side by side and demonstrating differences, but by considering the general impression or significant details that the average customer will remember, as most persons do not have photographic recollection of marks.
Passing Off — Duty to Distinguish — Competitor's Obligation
Where a later entrant to a market adopts packaging similar to that of an established trader in respect of similar products, the later entrant has a duty to do enough to distinguish its goods and avoid deception, such as by using a different colour or more prominent distinguishing marks.
Passing Off — Generic Products — Effect on Protection
The fact that a product name or type is generic does not prevent a trader from establishing protectable goodwill in a distinctive get-up used for that generic product, though protection does not extend to prevent others from producing the generic product itself.
Passing Off — Damages — Proof Required
A plaintiff claiming damages in a passing off action must adduce evidence of actual damage to goodwill or business, and mere speculation or failure to show a decline in sales attributable to the defendant's conduct will not suffice, though proof of damage is not essential where the plaintiff seeks only injunctive relief.

Legislation cited (2)

  • Trade Mark Act No. 17 of 2010 s.34
  • Trade Mark Act No. 17 of 2010 s.35

Cases cited (17)

  • Parke Davis & Co v Opa Pharmacy Limited [1961] EA 556
  • Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873
  • Spalding & Bros v AW Gamage Ltd (1915) 84 LJ Ch 449
  • Anglo Fabrics (Bolton) Ltd & Anor v African Queen Ltd (HCCS No. 0632 of 2006)
  • Commissioners of Inland Revenue v Muller & Co's Margarine Ltd [1901] AC 217
  • HP Bulmer Ltd v J Bollinger SA [1978] RPC 79
  • Zeneca Ltd v Vivi Enterprises Ltd (HCCS No. 842 of 1994)
  • Hodgkinson and Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169
  • White Hudson & Co Ltd v Asian Organisation Ltd [1964] 1 WLR 1466
  • Brooke Bond Kenya Ltd v Chai Ltd [1971] EA 10
  • Hassanali M Sachoo v John Hopkins OVT [1958] EA 463
  • Perry v Truefitt (1842) 49 ER 749
  • Arsenal Football Club plc v Reed [2001] RPC 922
  • Neutrogena Corpn v Golden Limited [1996] RPC 473
  • Erven Warnink Besloten Vennootschap v Townend & Sons (Hull) Ltd [1979] AC 731
  • Taittinger SA v Allbev Ltd [1993] FSR 641
  • Harrods Ltd v Harrodian School Ltd [1996] RPC 697

Full judgment

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

Britania Allied Industries Ltd v Aya Biscuits (U) Ltd (HCT-00-CC-CS 24 of 2009) [2012] UGCommC 61 (9 June 2012)
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.