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&Anor HCCS No. 325 of 2004 which set out what the plaintiff needs to prove in order to
succeed in an action for passing off, namely; (i) establish a good will or reputation to the goods
or services which he supplies in the mind of the purchasing public, (ii) demonstrate a
misrepresentation by the defendant to the public to believe that the goods and services offered to
him are goods and services of the plaintiff, and (iii) demonstrate that he suffers or he is likely to
suffer damage.
It was argued for the plaintiff that all that need to be proved as per the case of NAPRO
Industries Ltd (Supra) has been proved in this case because the plaintiff has since 2006 marketed
PANASUPER batteries through various media and has conducted various promotion activities in
respect of the said brand of batteries and as a result PANASUPER batteries have gained
popularity in Uganda. This shows that the Plaintiff’s batteries have over the years gained a good
reputation but the 1st defendant is selling and offering for sale batteries whose packaging, colour,
print-design (get up) and marks are identical to those of the Plaintiff. It is contended that the
Plaintiff has suffered damage as a result of the 1st and 2nd defendants’ selling of batteries bearing
the registered trademark of the plaintiff.
For the defendants, it was submitted that according to the case of NAPRO Industries Ltd (Supra)
the issue of passing off does not arise in this case as the goods in question are made in China and
on the packaging the manufacturer is Linyi Huatai Battery Co. Ltd and as such in the mind of the
purchasing public the name Muse-Af Enterprises cannot be connected to the said goods.
Therefore no misrepresentation can arise in such circumstances as the plaintiff is not the person
named as manufacturer or owner of PANASUPER batteries on the packaging.
Furthermore, it was submitted that there has been no evidence produced to court to prove passing
off, good will or confusion caused in the purchasing public and thus passing off cannot stand in
the above circumstances.
I have carefully considered the above submissions and I wish to point out that PW1 testified that
it was importing the PANASUPER batteries from the 2nd and 3rd defendants who manufacture
the same. He conceded that the plaintiff does not manufacture PANASUPER batteries. He
further testified that the plaintiff company started importing PAN SUPER batteries from Xinda
Batteries when the 2nd defendant started dealing with the 1st defendant. It is therefore clear that
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