Wakilii

Tuskys (U) Ltd v Tusker Mattresses (HCCS 3 of 2011)

High Court · [2015] UGCOMMC 91 · 2015 Judgment for Defendant AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for trademark infringement before the Commercial Court
Decision
Suit dismissed; defendant must continue using full registered trademark and not revert to singular use of "TUSKYS"

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that the defendant's registered trademark "Time To Go TUSKYS Your Friendly Supermarket" (Class 16) is fundamentally different from the plaintiff's "TUSKYS" trademark (Class 18) and can co-exist without causing likelihood of confusion. Plaintiff failed to prove trademark infringement on a balance of probability. Electronic evidence of alleged confusion was not authenticated as required by Electronic Transactions Act s.8(2) and could not be relied upon. Although the defendant previously used "TUSKYS" singularly before court order, this use ceased upon compliance with injunction. Suit dismissed, but costs awarded to plaintiff as defendant's prior singular use prompted the litigation.

Outcome

Suit dismissed; defendant must continue using full registered trademark and not revert to singular use of "TUSKYS"

Facts

Plaintiff Tuskys (U) Ltd registered trademark "TUSKYS" on 1 December 2008 in Class 18 for arts and crafts. Defendant Tusker Mattresses (U) Ltd, a Kenyan subsidiary, registered "Time To Go TUSKYS Your Friendly Supermarket" on 11 February 2009 in Class 16 for supermarket retail operations. Initial application erroneously registered as "Your Friendly Supermarket" only but was corrected by corrigendum in November 2009. Plaintiff's managing director discovered defendant using "TUSKYS" singularly on receipts and signage at defendant's Ntinda supermarket in November 2010. Prior interim order required defendant to revert to full registered trademark. Plaintiff operates internet-based business for arts and crafts made by women, while defendant operates chain of retail supermarkets. Plaintiff alleged confusion through email correspondence and online postings. Defendant contended trademarks are distinct, operate in different classes, use different marketing channels, and any confusion evidence was fabricated.

Issues

  1. Whether the defendant's registration and use of trademark registered under No. 31953 in class 16 is an infringement of the plaintiff's trademark registration No. 31804 in Class 18.
  2. Whether the plaintiff is entitled to the reliefs claimed.

Orders

  • Plaintiff's suit dismissed.
  • Defendant ordered to pay costs of the suit to the plaintiff.
  • Defendant ordered not to revert back to the use of the mark "TUSKYS" singularly and must always use its authorised mark "Time To Go TUSKYS Your Friendly Supermarket".

Rules and key headnotes

Trademark Infringement — Test for Determining Infringement — Visual Comparison of Marks
In cases of alleged trademark infringement, the court must compare the marks visually and arrive at its own conclusion on similarity, with the eye generally being the best test, though each case must be decided on its own circumstances including evidence of trade practice.
Trademark Infringement — Co-existence of Marks — Different Classes of Goods
Trademarks registered in different classes of goods (Class 18 for arts and crafts versus Class 16 for retail supermarket goods) can co-exist without causing likelihood of confusion where the marks are distinguishable and the goods and marketing channels are fundamentally different.
Trademark Infringement — Likelihood of Confusion — Factors to Consider
In determining whether confusion is likely in trademark infringement cases, regard must be given to the strength of the mark, proximity of goods, similarity of marks, marketing channels used, type of goods, degree of care likely to be exercised by the purchaser, evidence of actual confusion, and likelihood of expansion of the product line.
Electronic Evidence — Data Messages and Electronic Records — Burden of Proof of Authenticity
Under Electronic Transactions Act s.8(2), a person seeking to introduce a data message or electronic record in legal proceedings has the burden of proving its authenticity by evidence capable of supporting a finding that the electronic record is what the person claims it to be. The court must assess evidential weight with regard to reliability of manner in which data was generated, stored and communicated, reliability in which authenticity was maintained, manner of identifying the originator, and other relevant factors.
Trademark Registration — Correction of Errors — Corrigendum Procedure
Where an error in a trademark application is corrected by corrigendum before registration is completed, the correction procedure under Trademarks Act s.19(7) applies rather than post-registration rectification procedures under sections 34, 36 and 37, which only apply to marks already entered on the register.

Legislation cited (13)

Cases cited (8)

  • Capital Radio Ltd v F.M. Holdings & 2 others (HCCS No. 300 of 2005)
  • Re Morgan (1981) 18 Ch. Div. 93
  • Standard Signs Uganda Limited v Fred Leo Ogwang t/a Shandard & Anor (HCCS No. 240 of 2006)
  • Schweppes Ltd v Gibbens (1905) 22 RPC 113,601
  • Hannessy & Company v Veating (a) (1998) 25 R.P.C 361
  • Nice House of Plastics v Hamidu Lubega (HCCS No. 695 of 2006)
  • Interconsumer Products Ltd v Nice & Soft (2003) Ltd (Misc. Application No. 256 of 2011)
  • AMF, Inc. v Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979)

Full judgment

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

Tuskys (U) Ltd v Tusker Mattresses (HCCS 3 of 2011) [2015] UGCommC 91 (8 July 2015)
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.