Counsel for the defendant did concede that the salient aspects of both the plaintiff and
defendant‟s get-up are the word „Marie‟, the colour red or blue and the diagram of a Marie
biscuit. He however submitted that the similarity is accounted for by the fact that the said
features are what are common in the industry. Counsel for the defence submitted that the font is
not exclusive to the plaintiff‟s get-up being that it is a common and genetic font adopted in the
market.
Counsel for the defence further submitted that it is common market practice as testified by Mr.
Mutiso to adopt the colour red for the get-up of Marie biscuits and appealed to court to take
cognizance of the fact that all the samples of Marie biscuits which were exhibited in court bore
the colour red as the dominant colour. This in Mr. Mutiso‟s evidence was because the said Marie
biscuits were associated with the royal colour of Russia which was the history behind the biscuit
brand Marie.
Counsel for the defence as a result concluded that the similarities of the two products are generic
and their inclusion on the get-up for Marie is an inevitable occurrence.
I have considered the evidence before court and the submission of both counsels for which I am
grateful.
As a preliminary matter I will deal first with the defendant‟s contention that the get-up in
question is not in fact what was pleaded, I take this to be a technical argument. The substantive
question is whether or not the defendant company is passing off the plaintiff‟s products as their
own. That is the plaintiff‟s case. It is these products that have been exhibited to Court for
examination and decision.
The first issue relates to the get up of the suit products and whether or not the two are similar.
This to my mind is only significant if there is passing off or not. This is the crux of the suit and I
shall therefore address this issue together with the third issue on passing off.
Passing off is a tort developed out of deceit. It can be described as the common law form of
trade mark law but with wider coverage. The law of passing off and trade mark law have
common roots and therefore are in many respects similar. A passing off actions strictly arises out
of unregistered marks to which the plaintiff‟s goods now fall into given that the trade mark has
lapsed. The Trade Mark Act (No.17 of 2010) provides under Section 34 that no action can be
maintained for an unregistered mark under the Act. However Section 35 of the same Act
provides that it does not affect a right of action for passing off goods of another.
The main point about passing off is that goodwill has been established by one trader and that
another trader is trying to take advantage of that goodwill to cash in on it to the detriment of the
first trader.
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