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and submissions that the plaintiff stopped dealing in PANASUPER batteries in 2012 when its
distributorship contract expired and a new agent was appointed.
In the result, issue 1 (b) is answered in the negative.
Issue 2
Whether the 1st and 2nd Defendants infringed the said trademark or passed off the
batteries as those of the Plaintiff.
Both counsels argued this issue in two parts. The first part is on infringement and the second one
on passing off. I will follow the same approach in dealing with the issue.
(i) Infringement
It is the plaintiff’s case that the 1st and 2nd defendants by entering into a distributorship
agreement in respect of PANASUPER batteries well aware that the plaintiff is the registered
proprietor of the mark in Uganda are infringing its trademark.
The defendants on the other hand contend that the 2nd and 3rd defendants supplied PANASUPER
batteries to the plaintiff up until 2012 when the distributorship agreement between the plaintiff
and the 2nd defendant was terminated. It cannot be said that there was infringement as the
PANASUPER batteries sold were those of the manufacturer i.e. the 2nd and 3rd defendant.
Section 36 (1) of the Trademarks Act 2010 provides that, “Subject to sections 41 and 24, the
registration before or after the commencement of this Act, of a person in Part A of the register as
owner of a trademark other than a certification mark in respect of any goods shall, if valid, give
or be taken to have given that person the exclusive right to the use of the trademark in relation to
those goods.” [Emphasis added].
Under section 36 (2) the exclusive right to the use of a trademark is taken to be infringed by a
person who, not being the owner of the trademark or a registered user of the trademark uses by
way of permitted use, a mark identical with or so nearly resembling it, as to be 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 and in such a manner as to render the use of the
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