I have carefully considered the submissions of the defendants counsel and I agree that where
there has been infringement, the plaintiff whose trademark has been infringed is entitled to
compensation on the principles of restitutio in integrum.
I do not however agree that the plaintiff can claim under the same heading of restitutio in
integrum for infringement of trademark as well as for passing off. The basis for compensation in
terms of restitutio in integrum is the same. This is an understanding that the plaintiff suffered
loss as a consequence of the passing off and the infringement of a trademark. I must add that
there is no evidence that the defendant was responsible for manufacturing or counterfeiting the
plaintiff's products. Evidence merely shows that the defendant was selling goods which infringe
the plaintiffs trade Mark "Colgate double action". Damages would flow naturally from the act of
offering for sale and selling the right infringing goods to members of the public.
I also noted that the evidence adduced by the plaintiff was inadequate on the question of actual
sales achieved by the defendant which conversely would prove the loss to the plaintiff on the
premises that customers are deemed to have intended to buy the plaintiffs "Colgate double
action" but instead erroneously or mistakenly bought what the defendant put up for sale in the
names of "Colage double action". In the case of Attorney General versus Blake [2000] UK HL
45 [UK] cited in The Enforcement of Intellectual Property Rights: A Case Book LTC
Harms 2rd Edition 2012 at page 436 it was held that just like breaches of contract or tort, the
general principle regarding assessment of damages is that they are compensatory for loss or
injury. The general rule is that the measure of damages is to be, as far as possible, the amount of
money which will put the injured party in the same position he would have been in had he not
sustained the wrong. In the case of Tommy Hilfiger v Mcgarry & Others [2008] IESC 36
cited in The Enforcement of Intellectual Property Rights: A Case Book LTC Harms 3rd
Edition 2012 at page 438 while agreeing that the basic principle for assessment of damages is
restitutio in integrum, it was held that the assessment of damages for infringement and passing
off follow the same lines and both claims are frequently taken together with a single award been
made. The plaintiff need not show damage and the law presumes that any interference with
goodwill by infringement or passing off will result in damage. Restating damage by way of loss
of profits may be caused by diversion of customers to the defendant. This requires evidence that
the sales achieved by the defendant would necessarily have been obtained by the plaintiff.
I have considered the testimony of Edward Lubega, the East African Business Custom
Development Executive in Uganda who testified as PW2. In paragraph 5 of his written
testimony, he testified that the plaintiff used to make monthly sales of 70 dozens of the
toothbrushes to each of the defendants supermarkets branches at Mukono and Mbale. In
February 2016 they noticed a drop in sales of the said toothbrushes in the branches of the
defendants supermarkets quoted above. They established through investigations that the
defendant was selling counterfeit toothbrushes bearing the Mark "Colage Double Action" in the
same shelves as "Colgate Double Action". They further established that customers bought the
Decision of Hon. Mr. Justice Christopher Madrama
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