Wakilii

Societe Bic Anonvyeme De Droit Francais v Wenbara Trading Company Ltd (HCT-00-CC-CS 704 of 2006)

High Court · [2008] UGCOMMC 29 · 2008 Judgment for Plaintiff AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for trademark infringement heard ex parte after defendants failed to file defence
Decision
Judgment entered for the plaintiff with declaration of trademark rights, permanent injunction, order for delivery up and destruction of counterfeit goods, and award of damages

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court found trademark infringement established where the first defendant imported counterfeit BIC pens from China marked with the plaintiff's registered trademark. The court granted a declaration of trademark ownership, an injunction restraining further dealing in counterfeit goods, and ordered delivery up for destruction. General damages of UGX 10,000,000 were awarded for inconvenience, but the court declined to hold the directors personally liable or to award damages for loss of market share where no counterfeit goods entered the market.

Outcome

Judgment entered for the plaintiff with declaration of trademark rights, permanent injunction, order for delivery up and destruction of counterfeit goods, and award of damages

Facts

The plaintiff, a French company, held registered trademarks for 'BIC' in Uganda and manufactured BIC pens in Kenya through its licensed agent Haco Industries (K) Ltd. The first defendant, a Ugandan company, imported 852 cartons of pens from China marked as 'BIC' and 'Made in Kenya', falsely bearing the plaintiff's trademark, the Kenyan Bureau of Standards logo, and Haco Industries' address. Upon verification by Uganda Revenue Authority, the goods were discovered to be counterfeits. The plaintiff obtained an injunction to prevent the defendants from taking possession. The second and third defendants, directors of the first defendant, subsequently approached the plaintiff's agent in Kenya and admitted importing the counterfeit pens, proposing settlement terms which were rejected. The defendants failed to file a defence or appear at trial.

Issues

  1. Whether the defendants infringed the plaintiff's registered trademark by importing counterfeit BIC pens.
  2. Whether the directors of the first defendant company can be held personally liable for the acts of trademark infringement.
  3. Whether the plaintiff suffered compensable damage when the counterfeit goods never reached the market.

Orders

  • Declaration granted that the plaintiff is the lawful owner of the trademark 'Bic' in Uganda with exclusive rights to its use.
  • Injunction issued against the first defendant restraining it from further dealing in 'Bic' products.
  • 852 cartons of counterfeit Bic pens to be delivered up to the plaintiff for destruction.
  • General damages of UGX 10,000,000 awarded to the plaintiff.
  • Costs of the suit awarded to the plaintiff.
  • Interest on the decretal amount at court rate from date of judgment until payment in full.

Rules and key headnotes

Trademark Infringement — Elements of Proof — Registered Trademark Owner
A registered proprietor of a trademark establishes infringement by proving unauthorised use of the mark on goods not manufactured by or with the consent of the trademark owner, particularly where the goods are marked with the trademark and falsely held out as genuine products of the authorised manufacturer.
Trademark Infringement — Remedies — Delivery Up for Destruction
Where trademark infringement is established through importation of counterfeit goods bearing the plaintiff's registered trademark, the court will order delivery up of the infringing goods to the plaintiff for destruction regardless of whether the goods entered the market.
Directors' Liability — Corporate Veil — Personal Liability for Company Acts
Directors of a company cannot be held personally liable for acts of trademark infringement committed by the company in the absence of evidence that they personally engaged in infringing conduct or that circumstances justify piercing the corporate veil.
General Damages — Intellectual Property — Loss of Market Share
Where counterfeit goods bearing a trademark never enter the market, the trademark owner cannot establish loss of market share or damage to goodwill, though damages for inconvenience caused by the infringement may be recoverable.
General Damages — Intellectual Property — Inconvenience and Investigation Costs
General damages may be awarded in trademark infringement cases to compensate the plaintiff and its authorised agents for the inconvenience and expense of investigating the infringement, including travel and other costs incurred in responding to the defendant's infringing conduct.

Full judgment

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

Societe Bic Anonvyeme De Droit Francais v Wenbara Trading Company Ltd (HCT-00-CC-CS 704 of 2006) [2008] UGCommC 29 (3 June 2008)
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.