Wakilii

Pastificio Lucio Garafolo S.P.A v Quick Salers (U) Ltd (Miscellaneous Application No. 688 of 2018)

High Court · [2019] UGCOMMC 235 · 2019 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Ex parte application for inspection and removal of allegedly infringing trademark materials under Trade Marks Act s.79
Decision
Anton Piller-type order granted ex parte permitting inspection and removal of allegedly infringing materials pending determination of the main suit

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The court granted an ex parte application under Trade Marks Act s.79(2) for inspection and removal of allegedly infringing trademark materials. The applicant, registered proprietor of the SANTA LUCIA trademark in class 30, established a strong prima facie case of infringement by the respondent. The court ordered entry onto the respondent's premises in the presence of a High Court bailiff and designated trademarks inspector to inspect goods branded under SANTA LUCIA, remove infringing materials into court custody, and inventory all items. Costs were reserved to abide the outcome of the main suit.

Outcome

Anton Piller-type order granted ex parte permitting inspection and removal of allegedly infringing materials pending determination of the main suit

Facts

The applicant is the registered proprietor of the SANTA LUCIA trademark in Uganda in respect of goods in class 30 under the Trade Marks Act. The applicant alleged that the respondent was selling goods with get-ups and marks identical or deceptively similar to the SANTA LUCIA mark, causing confusion in trade. The applicant claimed loss of market share, reputation, and revenue due to the respondent's unauthorized infringing activity. The applicant feared the respondent was in possession of infringing materials which might be destroyed to conceal evidence. The applicant brought an ex parte application under s.79 of the Trade Marks Act for orders permitting entry onto the respondent's premises to inspect and remove infringing goods and documents. The applicant provided photographic evidence comparing the outer packaging boxes and packets of both the applicant's and respondent's products, and produced a certificate of trademark registration and renewal in Uganda.

Issues

  1. Whether the applicant satisfied the three essential preconditions for the grant of an Anton Piller order.
  2. Whether the respondent should be compelled to permit inspection and removal of goods and materials allegedly infringing the applicant's SANTA LUCIA trademark.

Orders

  • Respondent to permit the applicant to enter upon the respondent's business premises, stores, warehouses or such other parts thereof as may be necessary for the purpose of inspecting all goods and items sold and branded under the trademark SANTA LUCIA, documents, materials or articles relating to the infringement of the applicant's trademark.
  • Respondent to permit the applicant to enter upon the respondent's business premises, stores, warehouses or such other parts thereof as may be necessary for the purpose of moving into the custody of this court or any other place this court may deem fit all infringing products, materials or articles and documents relating to the importation, sale and distribution of the infringing products.
  • The applicant shall enter any of the said premises in the presence and company of a bailiff of the High Court and a designated inspector of trademarks designated in accordance with the Trademarks Act, 2010.
  • The bailiff and trademarks inspector shall make an inventory of all the infringing materials.
  • The infringing materials shall be removed from the respondent's premises and kept with the bailiff at the applicant's cost and dealt with in such manner as this court may deem fit in further proceedings in the main suit.
  • The costs for this application shall abide the outcome of the main suit.

Rules and key headnotes

Trade Marks — Anton Piller Orders — Statutory Basis under Trade Marks Act s.79
Under s.79(2) of the Trade Marks Act, a trademark owner may apply to the court ex parte and the court may make an order for the inspection of or removal from the infringing person's premises or control of the right-infringing materials which constitute evidence of infringement, the objective being to enable procurement of evidence of infringement by inspecting and removing the infringing materials.
Anton Piller Orders — Preconditions for Grant
For the grant of an Anton Piller order, three essential preconditions must be satisfied: the applicant must have a strong prima facie case, there must be potential or actual serious damage to the applicant's interests, and there must be clear evidence that the respondent possesses incriminating materials which might be destroyed to conceal evidence.
Trade Marks — Prima Facie Case of Infringement — Registration Certificate as Evidence
A certificate of trademark registration and renewal constitutes proof that an applicant is the registered proprietor of a trademark and establishes a strong prima facie case of infringement where identical or deceptively similar marks are used by another party without authorization.

Legislation cited (7)

Cases cited (1)

  • Uganda Performing Rights Society Ltd v Fred Mukubira (Miscellaneous Application No. 818 of 2003)

Full judgment

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

Pastificio Lucio Garafolo S.P.A v Quick Salers (U) Ltd (Miscellaneous Application No. 688 of 2018) [2019] UGCommC 235 (25 January 2019)
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.