Wakilii

Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo & Ors (HCT-00-CC-CS 430 of 2006)

High Court · [2007] UGCOMMC 64 · 2007 Judgment for Plaintiff AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for trade mark infringement and passing off
Decision
Judgment for plaintiff with permanent injunction, delivery up of infringing goods for destruction, general damages awarded, and cancellation of defendant's registered trade mark obtained in bad faith.

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that the defendants infringed the plaintiff's registered trade mark 'KANTA' and passed off their product as that of the plaintiff. The get-up of both products was substantially identical and likely to deceive consumers. The plaintiff's product had been on the Ugandan market since the 1960s and had acquired substantial goodwill and reputation, with over 77% market awareness. The defendants engaged in intellectual piracy by copying the plaintiff's packaging, including pamphlets. Permanent injunction granted restraining use of the mark; infringing goods to be delivered up for destruction; general damages of UGX 6,000,000 awarded; defendant's registered trade mark obtained during pendency cancelled.

Outcome

Judgment for plaintiff with permanent injunction, delivery up of infringing goods for destruction, general damages awarded, and cancellation of defendant's registered trade mark obtained in bad faith.

Facts

The plaintiff, a limited liability company, claimed the 1st and 2nd defendants infringed its registered trade mark 'KANTA' for hair dye products and passed off their goods as the plaintiff's. The plaintiff's product had been manufactured since 1947 and exported to Uganda since the 1960s. The defendants had been importing a competing product called 'Kanta Hair dye' into Uganda since 2000. The products were identical in packaging, colour, name and get-up, with the only difference being that the defendants' product lacked manufacturer's address, expiry date and batch number. During the pendency of the suit, the defendants registered a similar trade mark. A market survey showed the plaintiff's product had over 77% awareness among dealers and consumers. The plaintiff's business suffered decline in sales, and one importer ceased importing the genuine product due to market confusion caused by the counterfeit.

Issues

  1. Whether or not the get-up of the plaintiff's product and that of the defendants is the same.
  2. Whether the plaintiff's product has been on the market prior to that of the defendants.
  3. Whether the plaintiff has acquired substantial good will and reputation in its product.
  4. Whether or not the defendants are passing off the product as that of the plaintiff.
  5. Whether the plaintiff is entitled to the remedies sought.

Orders

  • Permanent injunction granted restraining the 1st and 2nd defendants from use, further and continued use of the words/mark 'KANTA' along with shape and design of the black hair dye.
  • Order restraining the 1st and 2nd defendants from the continued infringement of the trade mark.
  • The infringing Kanta hair dye and product get-up shall be delivered up to the plaintiff for destruction under the supervision of the officials of URA and UNBS.
  • General damages of UGX 6,000,000 awarded to the plaintiff for trade mark infringement and passing off.
  • Interest at 25% per annum from date of judgment till payment in full on the monetary award.
  • The trade mark obtained by the 2nd defendant during the pendency of the suit is cancelled.
  • Costs of the suit awarded to the plaintiff.
  • The 3rd and 4th defendants discharged with no order as to costs.

Rules and key headnotes

Trade Mark Infringement — Test of Likelihood of Confusion
In cases where trade mark infringement is alleged, infringement occurs when a suspected infringer uses a mark for goods or services identical or closely related to those of the plaintiff. The test of infringement is likelihood of confusion, being the probability that a reasonable consumer in the relevant market will be confused or deceived and will believe the infringer's goods or services come from, or are sponsored or endorsed by, the complainant or that the two are affiliated.
Passing Off — Essential Elements
Five characteristics must be present to create a valid cause of action for passing off: (i) a misrepresentation; (ii) made by a trader in the course of trade; (iii) to prospective customers or ultimate consumers of goods or services supplied by him; (iv) which is calculated to injure the business or good will of the trader in the sense that it is a reasonably foreseeable consequence; and (v) which causes actual damage to a business or good will of the trader by whom the action is brought or will probably do so.
Passing Off — Enforcement of Unregistered Trade Mark
A cause of action for passing off is a form of intellectual property enforcement against the unauthorized use of a mark which is considered to be similar to another person's registered or unregistered trade mark, particularly where the action for trade mark infringement based on a registered trade mark is unlikely to be successful due to the differences between the registered mark and the unregistered mark. It is a common law tort which can be used to enforce unregistered trade mark.
Trade Mark — Registration in Bad Faith During Pendency of Suit
Where a defendant registers a trade mark identical to or resembling the plaintiff's registered trade mark during the pendency of infringement proceedings, knowing that the plaintiff is the registered owner and the mark is subject of court proceedings, such registration is in bad faith and constitutes further evidence of dishonesty. The court may invoke its inherent powers under the Civil Procedure Act to cancel such registration.
Trade Mark Infringement — Remedies — Delivery Up and Destruction
A trade mark owner who successfully shows likelihood of confusion has a right of action in damages or for an account, and for an injunction to restrain the defendant for the future. The court may order infringing goods and product get-up to be delivered up to the plaintiff for destruction under supervision of relevant regulatory authorities.
Damages for Trade Mark Infringement — Assessment
Damages for trade mark infringement are intended as compensation for the plaintiff's loss and not as punishment to the defendant. In assessing general damages, the court will consider factors including the disallowed prayer for an order of account, whether the defendants are importers rather than manufacturers of the infringing product, and the proved loss suffered by the plaintiff.

Legislation cited (2)

Cases cited (2)

  • Reckitt & Coleman Ltd v Borden Inc [1990] 1 WLR 491
  • Nice House of Plastics Ltd v Hamidu Lubega (HCCS No. 695 of 2006)

Full judgment

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

Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo & Ors (HCT-00-CC-CS 430 of 2006) [2007] UGCommC 64 (21 June 2007)
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.