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mark likely to be taken as a trademark relating to goods or as importing a reference to some
person having the right as owner or as registered user of the trademark or to goods with which
that person is connected in the course of trade.
It is clear from the provision of section 36 (1) that the right to exclusive use given by registration
is only available if the registration is valid, that is, it is only when there is a valid registration that
the right to sue for infringement accrues. If the validity of registration is successfully challenged
like in this case, there would be no right conferred which can be sued upon.
Following the finding of this court on the first issue that the trademark was fraudulently
registered, and in view of the requirement for validity of registration, it is my finding that the
plaintiff cannot sue for infringement of the PANASUPER trademark because the purported
registration did not confer upon it the exclusive right of using that mark. For that fundamental
reason, the claim for the alleged infringement would fail without considering the merits of the
arguments.
(ii)
Passing off
According to Black’s Law Dictionary, passing off is the act or an instance of falsely
representing one‟s own product as that of another in an attempt to deceive potential buyers.
In the case of Abercrombie & Kent Ltd v Abercrombie & Kent (U) Ltd and Others H.C.C.S No.
1035 of 1995 [1997-2001] UCLR 157 at page 161, Byamugisha, J (as she then was (RIP))
quoted with approval a passage from Parker Knoll Ltd v Knoll International Ltd [1962] RPC
265 which stated the legal basis for an action of passing off as follows:
“The legal basis for an action of passing off is that it is wrong for the
defendant to represent, for trading purposes, that his/her goods on the market
or the business is that of the plaintiff. It is immaterial whether the
representation made is effected by direct statement or by using badges or getups by which the goods or business of the plaintiff are known by the ordinary
consumers”.
It is the plaintiff’s case that the 1st& 2nd defendants are passing of their goods as goods of the
plaintiff. The plaintiff’s counsel relied on the case of NAPRO Industries Ltd v Five Star Ltd
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