Wakilii

Colgate Palmolive Company Ltd v Sombe Supermarket Ltd (Civil Suit No. 689 of 2016)

High Court · [2017] UGCOMMC 6 · 2017 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 by way of formal proof following entry of interlocutory judgment in default of defence
Decision
Judgment entered for the plaintiff with awards of general and exemplary damages, interest, destruction of infringing goods, and costs

Observed later treatment

Cited — treatment unverified cited in 1 (treatment unverified) Sequitur — Uganda’s citator · Derived from citing cases in the Wakilii corpus — not an assertion that this case is good law.

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.

No adverse treatment recorded Cited 1 time with no adverse treatment recorded; not yet tested on the merits. Derived from citing cases in the Wakilii corpus — a deterministic signal, not legal advice.

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 Court held that the defendant infringed the plaintiff's registered trademark 'Colgate Double Action' by selling toothbrushes bearing the mark 'Colage Double Action' which was identical or nearly resembled the plaintiff's mark and was likely to cause confusion. The act also constituted passing off, as the defendant falsely represented the counterfeit toothbrushes as the plaintiff's products to deceive potential buyers. The Court awarded UGX 20,000,000 in general damages and UGX 30,000,000 in exemplary damages, ordered destruction of the infringing goods, and granted costs to the plaintiff.

Outcome

Judgment entered for the plaintiff with awards of general and exemplary damages, interest, destruction of infringing goods, and costs

Facts

The plaintiff, an American multinational company, is the registered owner of trademarks 'Colgate Double Action' and 'Double Action' in Uganda for toothbrushes in Class 21. The defendant operates supermarkets in Mukono, Mbale and Lugazi. Following an ex parte Anton Piller order on 15 September 2016, inspectors searched the defendant's premises in Mbale on 20 September 2016 and found 30 dozen and 5 pieces of toothbrushes bearing the mark 'Colage Double Action' displayed alongside the plaintiff's genuine 'Colgate Double Action' toothbrushes. The counterfeit toothbrushes were identical in get-up, colour and appearance except for the word 'Colage'. No infringing goods were found at the Mukono branch. The defendant was served but failed to file a defence. Interlocutory judgment was entered on 19 October 2016. The plaintiff's witness testified that the plaintiff had supplied 70 dozen toothbrushes monthly to each branch but noticed a sales drop from February 2016 after the defendant began selling the counterfeit product. The plaintiff stopped supplying the defendant in April 2016.

Issues

  1. Whether the defendant has infringed the plaintiff's 'Colgate Double Action' trademark by offering for sale toothbrushes bearing the mark 'Colage Double Action'?
  2. Whether the defendant's act of offering for sale toothbrushes bearing the mark 'Colage Double Action' constitutes passing off of the plaintiff's toothbrushes which bear the mark 'Colgate Double Action'?

Orders

  • Judgment entered for the plaintiff.
  • Issue 1 answered in the affirmative: defendant infringed plaintiff's trademark.
  • Issue 2 answered in the affirmative: defendant's acts constituted passing off.
  • General damages of UGX 20,000,000 awarded to the plaintiff for trademark infringement and passing off.
  • Exemplary damages of UGX 30,000,000 awarded to the plaintiff.
  • Interest at 17% per annum on damages awards from date of judgment until full payment.
  • Order for delivery up for destruction of all infringing toothbrushes found in possession of the defendant.
  • Costs of the suit awarded to the plaintiff.

Rules and key headnotes

Trademark Infringement — Test under Trademarks Act s.36(2)
Under section 36(2) of the Trademarks Act 2010, a registered trademark owner's exclusive right is infringed where a person uses a mark identical with or so nearly resembling the registered mark as to be likely to deceive or cause confusion in the course of trade in relation to goods of the same description.
Trademark Infringement — Offering Goods for Sale
The display of goods bearing an infringing mark on a retail shelf constitutes infringement of a registered trademark by offering goods for sale, even without proof of actual sales.
Passing Off — Definition and Elements
Passing off under section 1(1) of the Trademarks Act 2010 means falsely representing one's own product as that of another in an attempt to deceive potential buyers. The phrase 'one's own product' is wide enough to include a trader who buys goods from another source with the intention of passing them off as products of a rights holder whose goods have acquired a distinct reputation.
Passing Off — Close Resemblance as Prima Facie Proof
Close resemblance between marks prima facie proves the cause of action of passing off. Where counterfeit goods are displayed in such a manner as to make them indistinguishable from the rights holder's products, the elements of passing off are established.
Interlocutory Judgment in Default — Deemed Admissions
Under Order 8 rule 3 of the Civil Procedure Rules and section 57 of the Evidence Act, where a defendant fails to file a defence and interlocutory judgment is entered, every averment of fact in the plaint not denied is deemed to be admitted and need not be proved unless the court in its discretion requires proof.
Damages for Trademark Infringement and Passing Off — Restitutio in Integrum
Damages for trademark infringement and passing off follow the same compensatory principle of restitutio in integrum. A plaintiff cannot claim separate awards under both heads where the basis for compensation is the same loss arising from the infringement and passing off. A single award should be made for both causes of action.
Exemplary Damages — Deliberate Infringement for Profit
Exemplary or punitive damages may be awarded in tort where the defendant has deliberately calculated that the profits to be made from committing the tort may exceed the damages at risk. Such damages punish the defendant and prove that tort does not pay. Where a defendant displays counterfeit goods in a manner calculated to deceive customers for profit, exemplary damages are appropriate.

Legislation cited (9)

Cases cited (11)

  • Supa Brite v Pakad Enterprises Ltd [2001] 2 EA 563
  • Reckitt and Colman Products Ltd v Borden Inc and others [1990] 1 WLR 59
  • Haria Industries v PJ Products Ltd [1970] 1 EA 367
  • Reckitt and Colman Products Ltd v Borden Inc [1990] 1 All ER 873
  • Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] 2 All ER 927
  • Attorney General v Blake [2000] UKHL 45
  • Tommy Hilfiger v Mcgarry & Others [2008] IESC 36
  • ARO Mfg Co v Convertible Top Replacement Co 377 US 466
  • General Tire and Rubber Company v Firestone Tire and Rubber Company Ltd [1976] RPC 197 (HL)
  • Rooks v Barnard [1964] AC 1129
  • Obongo & Another v Municipal Council of Kisumu [1971] EA 91

Cases citing this judgment (1)

How later Ugandan judgments in the Wakilii corpus have cited this case. Treatment labels come from Sequitur — Uganda’s citator — each backed by a verbatim span from the citing judgment, and are not an assertion that this case is, or is not, good law.

Full judgment

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

Colgate Palmolive Company Ltd v Sombe Supermarket Ltd (Civil Suit No. 689 of 2016) [2017] UGCommC 6 (10 February 2017)
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.