Wakilii

Guangzhou Tiger Head Batteries Group Co Ltd v Uganda Revenue Authority & Anor (HCT-00-CC-CS 333 of 2012)

High Court · [2013] UGCOMMC 96 · 2013 Judgment for Defendant 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
Suit dismissed; impounded goods to be released to 1st defendant

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court dismissed the plaintiff's trademark infringement and passing off claim against the 1st defendant who imported Tiger Head batteries under a ministerial licence granted by statutory instrument. The court held that the defendant was a bona fide trader who lawfully imported the goods pursuant to ministerial authority, the plaintiff failed to prove that the imported batteries were counterfeit or not manufactured by the trademark owner, and no passing off occurred as the goods remained in custody and were not misrepresented to the public.

Outcome

Suit dismissed; impounded goods to be released to 1st defendant

Facts

The plaintiff, registered user of the Tiger Head trademark in Uganda, sued the 1st defendant for trademark infringement and passing off after the defendant imported six containers of Tiger Head batteries from Hong Kong pursuant to Statutory Instrument No. 23 of 2011 issued by the Minister of Tourism, Trade and Industry. The defendant obtained the import licence from the Minister, paid taxes, and was cleared by Uganda National Bureau of Standards, but the goods were impounded following the plaintiff's temporary injunction. The plaintiff claimed the batteries were not manufactured by it and were counterfeit. The 2nd defendant Uganda Revenue Authority undertook to abide by the court's decision. The plaintiff produced trademark licence contracts between the trademark owner Guangzhou Light Holdings Limited and itself as registered user, but did not call expert evidence to prove the batteries were counterfeit.

Issues

  1. Whether the actions of the 1st defendant amount to an infringement of the plaintiff's rights as the registered user of the trade mark and whether the 1st defendant has passed off the goods as those of the plaintiff?
  2. What are the remedies available to the parties?

Orders

  • Suit against the 1st defendant dismissed.
  • 2nd defendant Uganda Revenue Authority to release the impounded goods to the 1st defendant.
  • Request for general damages of Shs 300,000,000/= declined as defendant to recover goods.
  • Costs of the suit awarded to the 1st defendant.

Rules and key headnotes

Trademark Infringement — Burden of Proof — Expert Evidence Required
In a trademark infringement suit alleging that imported goods are counterfeit and not manufactured by the trademark owner, the plaintiff bears the burden of proving this fact through expert evidence from the field of manufacture, and cannot discharge this burden merely through container number comparisons or unsubstantiated oral testimony.
Trademark Infringement — Bona Fide Purchaser — Ministerial Licence
A trader who imports goods bearing a registered trademark pursuant to a valid statutory instrument issued by the Minister responsible for trade is a bona fide purchaser and does not infringe the registered user's trademark rights, even where the registered user has exclusive licence contracts with the trademark owner.
Passing Off — Elements — Misrepresentation and Damage
To succeed in an action for passing off, the plaintiff must establish goodwill or reputation in the goods, demonstrate misrepresentation by the defendant to the public that the goods offered are those of the plaintiff, and prove actual or likely damage. Where imported goods remain in custody and have not been offered to the public, no misrepresentation or damage can be established.
Import Licences — Ministerial Powers — Effect on Civil Liability
Where a Minister grants an import licence by statutory instrument authorising a trader to import goods manufactured by a specific company, the trader acts lawfully in relying on that licence, and any challenge to the propriety of the importation should be directed at the Minister's exercise of power rather than the trader who acted pursuant to lawful authority.
Burden of Proof — Existence of Facts Asserted
Under section 101 of the Evidence Act, whoever desires the court to give judgment as to any legal right dependent on the existence of facts which that party asserts must prove that those facts exist. A plaintiff asserting that imported goods are counterfeit bears the burden of proving this fact and cannot shift it to the defendant.
Trademark Infringement — Inspection Orders — Failure to Obtain
Where the Trade Marks Act provides for ex parte inspection orders to obtain evidence of infringing materials from the alleged infringer's premises, failure by the plaintiff to obtain such an order and adduce evidence of infringing materials leaves the infringement action without evidentiary foundation.

Legislation cited (5)

  • Trade Marks Act 2010 s.71
  • Trade Marks Act 2010 s.79(2)
  • Trade Marks Act 2010 s.82
  • Evidence Act s.101
  • External Trade Act (Import Licence Order SI No. 23 of 2011)

Cases cited (2)

  • Reddaway v Banham [1896] AC 199
  • Napro Industries Ltd v Five Star Ltd and Another (HCCS No. 325 of 2004)

Full judgment

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

Guangzhou Tiger Head Batteries Group Co Ltd v Uganda Revenue Authority & Anor (HCT-00-CC-CS 333 of 2012) [2013] UGCommC 96 (24 May 2013)
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.