Linyi Huatai Battery Manufacturing Company Ltd v Muse AF Enterprises Compnay Limited (Miscellaneous Application No. 425 of 2020)
Observed later treatment
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Holding
The High Court granted an ex parte Anton Piller order permitting the applicant trademark owner to enter the respondent's premises to inspect and remove allegedly infringing goods. The court held that the three conditions for granting an Anton Piller order were satisfied: the applicant had an extremely strong prima facie case of trademark infringement and passing off; the potential damage from lost revenue and injury to reputation was very serious; and there was clear evidence the respondent possessed incriminating materials with a real possibility of destruction before an inter-party hearing.
Outcome
Anton Piller order granted permitting inspection and seizure of allegedly infringing materials; inter-party hearing to follow within 15 days
Facts
The applicant is the registered proprietor of the PANASUPER trademark for batteries (trademark No. 53073, registered 29 June 2015, class 9). The applicant markets and sells batteries through an authorized agent under the PANASUPER mark in black, green and red packaging. The applicant discovered that the respondent was manufacturing, packaging, branding and selling similar batteries under the mark PANE SUPER at half the price. Following investigation, the applicant established that the respondent was selling these unauthorized batteries at various stores. The applicant alleged it had lost market share, reputation and revenue, and that the public was being deceived with inferior products. The applicant filed a trademark infringement suit (Civil Suit No. 376 of 2020) seeking a permanent injunction and seizure orders, then brought this ex parte application for an immediate Anton Piller order.
Issues
- Whether the Applicant has an extremely strong prima facie case
- Whether the damage, potential or actual, that the alleged infringement will cause to the Applicant is very serious
- Whether there is clear evidence that the Respondent has in its possession incriminating things or documents and there is a real possibility that they may destroy such material before any application inter-party can be made
Orders
- The Respondent does permit the Applicant and their advocates to enter upon the Respondent's business premises, stores or warehouses for purpose of inspecting all goods or items sold and or branded under the trademark or name of PANE SUPER and or PANASUPER plus any documents, materials or articles relating to the infringement of the Applicant's trademark over the said PANASUPER battery products
- The Applicant and their advocates are permitted to remove into the custody of this Court all unauthorized products, documents or materials or articles relating to the unauthorized manufacturing, production, reproduction, distribution and or sale of products under the Applicant's trade name, style and marks
- An application for hearing inter-party be filed by the Applicant within fifteen (15) days from the date of this Ruling
- The costs of this application shall be in the cause
Rules and key headnotes
Legislation cited (7)
- Judicature Act s.33
- Judicature Act s.38(1)
- Judicature Act s.39(2)
- Civil Procedure Act s.98
- Civil Procedure Rules Order 52 Rules 1, 2 and 3
- Trademarks Act No. 17 of 2010 s.79(1)
- Trademarks Act No. 17 of 2010 s.79(2)
Cases cited (5)
- Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779
- Uganda Performing Rights Society Ltd v Fred Mukubira (Miscellaneous Application No. 818 of 2003)
- Linyi Hua Tai Battery Co. Ltd v Panyahululu Co. Ltd (Civil Suit No. 238 of 2008)
- Entick v Carrington (1765) 2 Wils KB 275
- Daniel Mukwaya v Administrator General (Civil Suit No. 630 of 1993)
Cases citing this judgment (2)
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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