case must always be a question of evidence, and the more simple the phraseology, the
more like it is to a mere description of the article sold, the greater becomes the
difficult of proof, but of the proof establishes the fact the legal consequence appears
to follow”.
Lord Hulsbury L.C in the case of Reddaway v/s Banhan [1896] AC 199 at page 204 stated:
“…I believe the principle of law may be very plainly stated, and that is, that nobody
has any right to represent his goods as the goods of somebody else”.
In Warnink v/s Townend & Sur (Hull) [1979] AC 731 at page 742 Lord Diplock identifies
five characteristics which must be present in order to create a valid cause of action for
passing – off namely:
1-
a misrepresentation;
2-
made by a trader in the course of trade;
3-
to prospective customers of his or ultimate consumers of goods or services
supplied by him.
4-
which is calculated to injure the business or goodwill of another trader, and
5-
which causes actual damage to a business or good will of the trader by whom
the action is brought or will probably do so.
To prove its case in passing off the Plaintiff relied on the evidence of its Company Secretary
Ms. Sarah Walusimbi. In her testimony the witness explained the similarities and differences
between the packets and blister packs of the Plaintiff and those in which the toothbrushes
imported by the Defendant were packed. The differences pointed out were that the bottom
back of the dozen pack for the Defendant‟s toothbrushes had “Designed in Germany” under
the Plaintiff‟s name instead of the Plaintiff‟s postal address, that the Defendants dozen packet
unlike the Plaintiff‟s did not have a bar code. The Defendants packet had “NICE ADULT
TOOTHBRUSH”
while
the
Plaintiff‟s
genuine
packet
had
“NICE
CLASSIC
TOOTHBRUSH” on the sides and at the top of the back of the packet. The inside of the
blister packs of the Defendants toothbrushes were exactly the same as the Plaintiff‟s in
colour, design, wording, brand name of manufacturer and in describing the features and uses
of the toothbrush. The back of the blister pack for the Defendant‟s toothbrush is in all ways
identical to the Plaintiff‟s blister pack and bears of the Plaintiff trademark “NICE
TOOTHBRUSH”. The colour designs and arrangements are also the same.
8