The plaintiff's counsel relies on the registration of the plaintiffs Mark "Colgate Double Action"
and "Double Action" attached to the written testimony of PW1 Mr Jackson Ronald. He further
relies on section 36 of the Trademarks Act for the legal proposition that registration gives the
plaintiff exclusive right of use in the trademark in relation to the goods mentioned. The right
conferred by the section shall be taken to have been infringed by a person, or not being the
owner of the trademark where registered user of a trademark, uses a Mac identical with or so
nearly resembling the registered mark as is likely to deceive or cause confusion in the course of
trade in relation to any goods of the same description where the use would result in a likelihood
of confusion in such a manner as to mistake it for the Mark which is the registered in relation to
the goods. He contended that the plaintiff is entitled to the exclusive use of the trademark
described above. From the evidence which include still pictures, videos and samples of the right
infringing toothbrushes removed from the defendant supermarket shelf at Mbale, it is clearly
demonstrated that the defendant is offering for sale toothbrushes bearing the Mark " Colage
Double Action" which Mark is also sought identical with "Colgate double action" as to be likely
to deceive or cause confusion in the course of trade. The plaintiff's counsel further submitted that
the act of offering for sale toothbrushes bearing the said Mark is a clear case of infringement of
the plaintiff‘s rights in respect of the said trademark. He prayed that the first issue is answered in
the affirmative.
Whether the defendants act of offering for sale toothbrushes bearing the Mark "Colage double
action" constitutes passing off of the plaintiffs toothbrushes which bear the Mark "Colgate
double action"?
The plaintiff's counsel relied on the principles of law of passing off as quoted in the case of Supa
Brite vs. Pakad Enterprises Ltd [2001] two EA 563 where the Court of Appeal of Kenya quoted
with approval the case of Reckitt and Colman Products Ltd versus Borden Inc and others [1990]
1 WLR 59. One the plaintiff needs to prove is that he had acquired a reputation or good will
connected with the goods or services supplied and such goods or services were known to the
buyers by some distinctive get up or feature; that the defendant had, whether or not intentionally
made misrepresentation to the public leading them to believe that the defendants goods or
services were the plaintiffs‘ and; that the plaintiff suffered damages because of the erroneous
belief engendered by the defendants misrepresentation, and that all the three elements were
questions of fact.
Counsel submitted that the undisputed long and continuous and extensive use with a high-quality
of standards maintained by the plaintiff in its trademark had acquired a distinct and distinguished
reputation so much that it is now one of the world's most recognised brands. Secondly, the word
"Colgate" also constitutes an integral and dominant part of the plaintiff‘s corporate name and
trading style. The trademark "Colgate" has become distinctive of the plaintiff‘s business and
products and is entrenched in the minds of the public, including the Ugandan population at large,
all of whom instantly and unhesitatingly associate the mark with the products and business of the
Decision of Hon. Mr. Justice Christopher Madrama

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