Wakilii

Colgate-Palm Olive Company Limited v By his stripes we are healed Limited and Another (Civil Suit No. 691 of 2016)

High Court · [2020] UGCOMMC 156 · 2020 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, proceeded ex parte after defendants failed to appear
Decision
Judgment entered for plaintiff; defendants permanently restrained from trademark infringement and passing off; damages and costs awarded to plaintiff

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court held that the defendants infringed the plaintiff's registered Colgate trademark by selling counterfeit toothpaste bearing marks identical or nearly resembling the registered mark, likely to deceive consumers. The court further held that the defendants committed passing off by falsely representing their counterfeit products as the plaintiff's genuine products, thereby misrepresenting to the public and causing loss to the plaintiff through reduced sales. Both trademark infringement and passing off were established on the balance of probabilities.

Outcome

Judgment entered for plaintiff; defendants permanently restrained from trademark infringement and passing off; damages and costs awarded to plaintiff

Facts

The plaintiff, an American consumer products company, manufactures and sells toothpaste under the registered Colgate trademark in Uganda. The first defendant operates a distribution outlet in Kampala; the second defendant is its sole director and shareholder. The plaintiff alleged that the defendants distributed and sold counterfeit Colgate toothpaste across multiple districts in Uganda using packaging nearly identical to the plaintiff's genuine products. A private investigator purchased counterfeit toothpaste from the defendants and obtained a receipt. The defendants filed a written statement of defence denying the allegations but failed to appear at the hearing. The matter proceeded ex parte with evidence from the plaintiff's customer development executive and the private investigator establishing the sale of counterfeit products bearing the plaintiff's trademark.

Issues

  1. Whether the defendant's actions amount to an infringement of the Plaintiff's registered trademarks.
  2. Whether the defendant's actions amount to passing off of the defendant's toothpaste as the Plaintiff's.
  3. Whether the Plaintiff is entitled to the remedies prayed for in the plaint.

Orders

  • Defendants permanently restrained from infringing the Plaintiff's registered marks and passing off the Plaintiff's products.
  • General damages awarded to the Plaintiff in the sum of UGX 75,000,000.
  • Punitive damages awarded to the Plaintiff in the sum of UGX 50,000,000.
  • Interest awarded at 8% per annum from the date of judgment until payment in full on both general and exemplary damages.
  • Costs of the suit awarded to the Plaintiff.

Rules and key headnotes

Trademark Infringement — Use of Identical or Confusingly Similar Mark
Under section 36(2) of the Trademarks Act 2010, infringement of a registered trademark occurs when a person who is not the owner or registered user uses a mark identical with or so nearly resembling the registered trademark as to be likely to deceive or cause confusion in the course of trade in relation to goods of the same description.
Trademark Infringement — Exclusive Right Conferred by Registration
Registration of a trademark in Part A of the register confers on the registered owner the exclusive right to use the trademark in relation to the goods for which it is registered, subject to statutory exceptions under sections 41 and 24 of the Trademarks Act 2010.
Passing Off — Elements to be Established
To establish passing off, a plaintiff must prove three elements: (a) that the plaintiff has acquired goodwill or reputation connected with goods or services known by a distinctive get-up or feature; (b) that the defendant made misrepresentations to the public leading them to believe the defendant's goods were the plaintiff's; and (c) that the plaintiff suffered damage because of the erroneous belief engendered by the defendant's misrepresentation.
Passing Off — Requirement of Actual Sale
Passing off requires evidence of actual sale of goods as those of the plaintiff. The tort is in the goods rather than in the mark, and the use of the phrase 'one's product' in the statutory definition is wide enough to include a trader who buys goods from another source with the intention of passing off the goods as those of another whose goods have acquired a distinct reputation.
Damages — Measure of General Damages for Trademark Infringement and Passing Off
The measure of general damages for trademark infringement and passing off is the sum of money which would put the injured party in the same position as if the wrong had not been sustained. Damages flow naturally from the act of offering for sale and selling goods that infringe the plaintiff's trademark to members of the public.
Punitive Damages — Award for Deliberate and Extensive Passing Off
Where a defendant has deliberately and extensively passed off goods as those of the plaintiff in wanton and willful disregard of the law, punitive damages may be awarded in addition to general damages to register the court's disapproval. However, such award should not be excessive and must not exceed what would have been imposed in criminal proceedings if the conduct were criminal.

Legislation cited (4)

Cases cited (10)

  • Colgate Palmolive Co Ltd v Sombe Supermarket (Civil Suit No. 689 of 2016)
  • Supa Brite v Pakad Enterprises Ltd [2001] 2 EA 563
  • Reckitt and Colman Ltd v Borden Inc and Others [1990] 1 WLR 59
  • Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] 2 All ER 927
  • Mutekanga v Equator Growers Uganda Ltd [1995-1998] EA 219
  • Haria Industries vs PJ Products Ltd (supra)
  • General Tire and Rubber Company v Firestone Tire and Rubber Company Ltd [1976] RPC 197
  • Obongo & Another v Municipal Council of Kisumu [1971] EA 91
  • O'Connor v Hewiston [1979] Crim LR 46
  • Archer v Brown [1985] QB 401

Full judgment

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

Colgate-Palm Olive Company Limited v By his stripes we are healed Limited and Another (Civil Suit No. 691 of 2016) [2020] UGCommC 156 (2 September 2020)
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.