Wakilii

United Breweries Limited v Rest Club One Limited (Civil Suit 477 of 2020)

High Court · [2023] UGCOMMC 98 · 2023 Judgment for Defendant AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
First instance civil suit for trademark infringement and passing off
Decision
Suit dismissed with costs to the Defendant

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court dismissed a trademark infringement and passing off claim concerning premium gin products. The plaintiff owned registered trademark CLUB 5 (No. 52927) and alleged the defendant's CLUB One Premium Gin infringed its mark. The court held that where both marks are registered under Part A of the Trademarks Act in the same class, the use of one registered mark does not infringe the other under section 36(5). The word CLUB is generic and confers no exclusive rights. The distinctive numbers (5 versus One) and different design elements prevented likelihood of confusion. The plaintiff failed to prove misrepresentation, goodwill, or damage necessary for passing off.

Outcome

Suit dismissed with costs to the Defendant

Facts

United Breweries Limited owns registered trademark No. 52927 CLUB 5 in class 33 for alcoholic beverages and produces premium gin under that mark, registered on 5 June 2015. Rest Club One Limited has been producing and selling premium gin under the name CLUB One Premium Gin since 2016. The defendant applied for preliminary advice on distinguishing features on 27 May 2020 and was advised its mark was unique. The defendant obtained trademark registration No. 68842 for Club One Premium Gin on 7 September 2020, after this suit was filed but before the registration was completed. Both marks are in class 33 (alcoholic beverages) and registered in Part A of the register. The plaintiff's sales and marketing manager discovered the defendant's product during field work in Mubende, Mityana, Kyenjojo and Kabarole districts. The Registrar of Trademarks testified that Premium Gin is descriptive, both marks share the word CLUB, but the numbers one and five differ in design and pronunciation.

Issues

  1. Whether the Defendant has infringed on the Plaintiff's trademark?
  2. Whether the Defendant has passed off its goods as those of the Plaintiff?
  3. What remedies are available to the parties?

Orders

  • Suit dismissed against the Plaintiff.
  • Costs awarded to the Defendant.

Rules and key headnotes

Trademark Infringement — Co-existence of Registered Marks in Same Class
Where two trademarks are both registered under Part A of the Trademarks Act in respect of goods in the same class, the use of one registered trademark does not constitute infringement of the other registered trademark within the meaning of section 36(5) of the Trademarks Act No. 17 of 2010.
Trademark Infringement — Likelihood of Confusion Test
The test of trademark infringement is likelihood of confusion, assessed by determining whether a reasonable customer in the relevant market will be confused or deceived and believe the infringer's goods come from, are sponsored by, or endorsed by the complainant, or that the two are affiliated. The court must assume the registered trademark is used in a normal and fair manner and assess likelihood of confusion in relation to how the defendant uses its sign.
Trademark Infringement — Generic Words and Distinctiveness
The use of a generic word such as CLUB in a trademark does not confer exclusive rights to the owner of a registered trademark containing that word. Where marks share a generic word but are distinguished by distinctive elements such as different numbers, the concept of numbers distinguishes the goods and makes public confusion unlikely.
Trademark Infringement — Burden of Proof
The burden of proof lies with the plaintiff to prove the fact of trademark infringement to the required standard, which is on a balance of probabilities.
Passing Off — Elements of the Tort
For a claim for passing off to succeed, the plaintiff must prove: (i) the defendant impliedly or expressly misrepresented their goods as those of the plaintiff; (ii) the plaintiff's business had acquired goodwill; (iii) the defendant's misrepresentation was calculated to injure the business or goodwill; and (iv) actual damage was caused to the business or goodwill or will probably do so.
Passing Off — Failure to Prove Essential Elements
A passing off claim fails where the plaintiff does not adduce sufficient evidence to prove misrepresentation to traders that products originated from or were associated with the plaintiff, does not prove goodwill, and does not prove injury or actual damage or probability of damage to business or goodwill.

Legislation cited (9)

  • Trademarks Act No. 17 of 2010 s.1
  • Trademarks Act No. 17 of 2010 s.9(1)(e)
  • Trademarks Act No. 17 of 2010 s.9(2)
  • Trademarks Act No. 17 of 2010 s.26
  • Trademarks Act No. 17 of 2010 s.36
  • Trademarks Act No. 17 of 2010 s.36(5)
  • Trademarks Act No. 17 of 2010 s.37
  • Evidence Act Cap 6 s.101
  • Evidence Act Cap 6 s.103

Cases cited (7)

  • Halsbury's Laws of England 4th edition 1984, Butterworths London at pg.61
  • Vision Impex Limited v Sansa Ambrose & Goldman Logistice Import and Export (High Court Civil Suit No. 303 of 2013)
  • Angelo Fabrics (Bolton) Ltd and Another v Africa Queen Ltd and Another (High Court Civil Suit No. 632 of 2006)
  • Standards signs (U) Ltd v Standard Signs Ltd and Another (High Court Civil Suit No. 540 of 2006)
  • Glaxo Group Limited v JB Chemicals & Pharmaceutical Limited (Civil Appeal No. 68 of 2002)
  • Reddaway Vs Banham [1896]AC 199 at pg.204
  • Reckit & Colman Products Vs Borden [1990] ALLER 873

Full judgment

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

United Breweries Limited v Rest Club One Limited (Civil Suit 477 of 2020) [2023] UGCommC 98 (24 February 2023)
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.