Wakilii

Nice House of Plastic v Moses Buule (HCT-00-CC-CS 602 of 2005)

High Court · [2007] UGCOMMC 39 · 2007 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. Heard ex parte following defendant's non-appearance after substituted service.
Decision
Judgment entered for plaintiff with permanent injunctions granted and infringing goods ordered destroyed. Defendant did not appear after substituted service.

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Court held that Nice House of Plastic Ltd was the registered proprietor of the trademarks 'NICE' and 'NICE TOOTHBRUSH'. The defendant Moses Buule infringed these trademarks by importing toothbrushes bearing identical or substantially similar marks without authorisation. The defendant's packaging and labelling constituted passing-off, calculated to mislead consumers into believing the goods originated from the plaintiff. Permanent injunction granted restraining further infringement and ordering destruction of infringing goods. General damages and account of profits refused as goods were detained before reaching the market.

Outcome

Judgment entered for plaintiff with permanent injunctions granted and infringing goods ordered destroyed. Defendant did not appear after substituted service.

Facts

Nice House of Plastic Ltd, registered proprietor of the trademarks 'NICE' and 'NICE TOOTHBRUSH', brought suit against Moses Buule for trademark infringement and passing-off. In July/August 2005, Uganda Revenue Authority impounded 85 cartons of toothbrushes imported by the defendant from the United Arab Emirates. The impounded toothbrushes bore the marks 'NICE' and 'NICE TOOTHBRUSH' on both the individual blister packs and the dozen-pack cartons. The packaging was identical or very similar in appearance, colour, design and wording to the plaintiff's packaging. Import documents including the commercial invoice, bill of lading and customs declarations named Moses Buule as consignee and importer. The goods were seized before reaching the market. The plaintiff had been manufacturing toothbrushes in Uganda for 35 years and had acquired reputation and goodwill under the NICE marks. Service of summons was effected by substituted service through newspaper advertisement. The defendant did not file a defence and the matter proceeded ex parte.

Issues

  1. Whether the Plaintiff is the owner of the trademarks 'NICE' and 'NICE TOOTHBRUSH'.
  2. Whether the Defendant infringed the Plaintiff's trademarks.
  3. Whether the Defendant's action in the manner in which he packed and labelled the toothbrushes imported into Uganda amounts to passing off of the Plaintiff's trademarks and product get-up.
  4. Whether the Plaintiff is entitled to the remedies prayed for.

Orders

  • Permanent injunction issued restraining the Defendant from using the marks 'NICE' and 'NICE TOOTHBRUSH' in relation to toothbrushes and packets of toothbrushes.
  • Permanent injunction restraining the Defendant from infringing the Plaintiff's trademarks 'NICE' and 'NICE TOOTHBRUSH'.
  • Permanent injunction restraining the Defendant from using packets, packing and/or get-up identical or similar to those used by the Plaintiff.
  • Permanent injunction restraining the Defendant from branding his products with marks similar to the Plaintiff's trademarks.
  • The Plaintiff, in conjunction with Uganda Revenue Authority, shall cause the infringing consignment of toothbrushes detained in bond 391 to be destroyed by burning or other suitable means.
  • Costs of the suit awarded to the Plaintiff.
  • Prayer for general damages dismissed.
  • Prayer for account of profits dismissed.

Rules and key headnotes

Trademarks — Proof of ownership — Registration certificate as evidence
A person registered as proprietor of a trademark on the Register of Trademarks is by such registration given the exclusive right to use the trademark in relation to the goods for which it is registered, and a certificate of registration issued under section 21 of the Trademarks Act is evidence of such ownership.
Trademarks — Infringement — Use of identical or confusingly similar mark
Infringement of a registered trademark arises when a person who is not the proprietor or a registered user uses a mark identical with the registered trademark or so nearly resembling it as to be likely to cause confusion, in relation to goods in respect of which the trademark is registered, in such manner as to render the use likely to be taken as use of a trademark.
Trademarks — Infringement — Deemed ownership through bill of lading
The person named as consignee in a bill of lading is deemed to be the owner of the goods listed therein, and where such goods bear infringing marks, the consignee is liable for trademark infringement.
Passing-off — Elements of the cause of action
A valid cause of action for passing-off requires five elements: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers or ultimate consumers (4) which is calculated to injure the business or goodwill of another trader, and (5) which causes or will probably cause actual damage to that trader's business or goodwill.
Passing-off — Get-up and packaging — Similarity assessment
In determining whether packaging or get-up constitutes passing-off, the court must examine the marks, labels or devices complained of and decide whether they are calculated to deceive. While the eye is generally the best test and comparison of the marks is usually sufficient, each case must be looked at on its own facts with assistance from witnesses as to trade practice.
Remedies — Permanent injunction — Destruction of infringing goods
Where trademark infringement and passing-off are established, the plaintiff is entitled to a permanent injunction restraining further use of the infringing marks and get-up, and the court may order destruction of infringing goods detained by authorities before reaching the market.
Remedies — General damages — Requirement of actual damage
General damages for trademark infringement and passing-off will not be awarded where the infringing goods were impounded and detained before any were put on the market, as the plaintiff has not shown any damage that has arisen. Similarly, an account of profits will be refused where no profits were earned by the defendant.

Legislation cited (7)

Cases cited (7)

  • Ross T. Smyth & Co Limited v T.D Bailey, Sons & Co. [1940] 3 All ER 60
  • Abercrombie & Kent Ltd v Abercrombie & Kent (U) Ltd [1997-2001] UCL 157
  • Reddaway v Banhan [1896] AC 199
  • Warnink v Townend & Sur (Hull) [1979] AC 731
  • Hassanali M. Sachoo v Jon Kopings O.V.T [1958] EA 463
  • Schweppes Ltd v Gibben [1905] 22 RPC 113
  • Hennessy & Co. v Keating [1908] 25 RPC 361

Full judgment

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

Nice House of Plastic v Moses Buule (HCT-00-CC-CS 602 of 2005) [2007] UGCommC 39 (22 April 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.