Wakilii

Kiwi European Holding Bv & Anor v Djaoto Arua (High Court Miscellaneous Application No. 457 of 2006)

High Court · [2006] UGCOMMC 55 · 2006 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for temporary injunction arising from main suit for passing off and trademark infringement
Decision
Temporary injunction granted pending determination of main suit for trademark infringement and passing off

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 the applicants established a prima facie case raising serious triable issues concerning trademark infringement and passing off of counterfeit KIWI shoe polish. The court found that if the counterfeit goods were released into the market, the applicants' reputation and goodwill, acquired over many years, would suffer irreparable damage that could not be adequately compensated by monetary damages. The balance of convenience favoured the applicants as registered trademark proprietors and manufacturers. A temporary injunction was granted restraining the respondent from clearing, disposing of, selling, or dealing with the goods pending determination of the main suit.

Outcome

Temporary injunction granted pending determination of main suit for trademark infringement and passing off

Facts

The first applicant is the registered proprietor of the KIWI shoe polish trademark and design in Uganda. The second applicant is the sole manufacturer of KIWI products in Kenya for sale in East Africa under the authority of the first applicant. In April 2006, the Uganda Revenue Authority detained four containers of shoe polish bearing the KIWI mark, allegedly imported by the respondent from China via Hong Kong. The applicants contended that the goods were counterfeit KIWI shoe polish bearing false labels indicating manufacture in Kenya by the second applicant. The respondent, a Congolese national, claimed the goods were genuine KIWI products purchased from China and destined in transit for the Democratic Republic of Congo. The goods remained detained by URA at the time of the application. The applicants sought a temporary injunction to prevent the respondent from clearing or dealing with the goods pending the main suit for passing off and trademark infringement.

Issues

  1. Whether the applicants have a prima facie case with serious triable issues in the main suit.
  2. Whether the applicants would suffer irreparable injury which an award of damages could not adequately atone if the injunction were refused.
  3. Whether the balance of convenience favours granting the temporary injunction.

Orders

  • A temporary injunction does hereby issue restraining the respondent, his servants, or agents from clearing, disposing of, selling or otherwise dealing in or with the shoe polish under the name KIWI the subject of H.C.C.S. No. 0391 of 2006 pending the final determination of the said suit.
  • Costs of this application shall be in the cause of the main suit.

Rules and key headnotes

Civil Procedure — Temporary Injunctions — Conditions for Grant
A court will exercise its discretion to grant a temporary injunction where the applicant demonstrates: first, a prima facie case raising serious triable issues; second, that the applicant would suffer irreparable injury which damages could not adequately atone if the injunction is refused and the applicant later succeeds; and third, if the court is in doubt as to the first two conditions, that the balance of convenience favours the applicant.
Civil Procedure — Temporary Injunctions — Prima Facie Case Test — Serious Triable Issues
At the interlocutory stage of a temporary injunction application, the court should not delve into the merits to the extent of conducting a mini-trial, but should instead consider whether the applicant raises serious triable issues in the main suit, rather than requiring proof of a prima facie case with a probability of success.
Intellectual Property — Passing Off — Basic Principle
The basic underlying principle of a passing off action is that a person is not entitled to sell his own goods under the pretence that they are the goods of another person, and nobody has the right to represent his goods as the goods of somebody else.
Intellectual Property — Trademark Infringement — Irreparable Injury — Reputation and Goodwill
Where a registered trademark proprietor alleges that counterfeit goods bearing its mark would, if released into the market, damage the reputation and goodwill acquired over many years in producing high-quality goods, such damage constitutes irreparable injury that cannot be adequately atoned for by an award of monetary damages, because reputation and goodwill are not matters which can be measured monetarily and once damaged cannot be re-established easily.
Intellectual Property — Trade Marks — Goods in Transit — Scope of Protection
The fact that allegedly counterfeit goods are claimed to be in transit to another jurisdiction does not preclude the court from granting a temporary injunction where the goods are currently held within Uganda and it is not clear at the interlocutory stage whether the goods were genuinely destined for export or intended for the local market, particularly where the applicant's cause of action is founded both on trademark infringement and on the common law tort of passing off.

Legislation cited (4)

Cases cited (9)

  • Noormohamed Janmohamed v Kassamali Virji Madhiain (1953) 20 EACA 8
  • E.L.T. Kiyimba-Kagwa v Haji Abdu Nasser Katende (1985) HCB 43
  • J.K. Sentongo & Another v Shell (U) Ltd (1995) II KALRI
  • Robert Kavuma v Hotel International Ltd (Supreme Court Civil Appeal No. 8 of 1990)
  • Mohamed Yahu v Abdumur Khamis (1994) II KALR 137
  • Napro Industries Ltd v Five Star Industries Ltd & Another (High Court Miscellaneous Application No. 773 of 2004)
  • Perry v Truefit (1842) 6 Beav 66
  • Reddaway (Frank) & Company Ltd v George Banham & Company Ltd [1896] AC 199
  • Musicraft Manufacturing (U) Ltd v Allied Bank International (U) Ltd & Another (1997-2001) UCL 309

Full judgment

↓ Download PDF

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

Kiwi European Holding Bv & Anor v Djaoto Arua (High Court Miscellaneous Application No. 457 of 2006) [2006] UGCommC 55 (3 October 2006)
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.