sample which PW1 Ms Walusimbi managed to procure from UNBS.
The packaging is
stunningly similar to that of the plaintiff: same get-up and almost same everything. It has been
submitted that a registered proprietor of a trade mark acquires exclusive rights to deal with the
trade mark in respect of which the registration has been done. I agree with this submission. Any
person who uses the trade mark without the consent of the registered proprietor infringes the
trade mark. Court is satisfied that the defendant herein has infringed the plaintiff’s trade mark.
As to whether or not the plaintiff has made out a case of passing off, Court is of the view that a
cause of action for passing off is a form of intellectual property enforcement against the
unauthorized use of a mark which is considered to be similar to another party’s registered or
unregistered trade marks, particularly where the action for trademark infringement based on a
registered trade mark is unlikely to be successful (due to the differences between the registered
trade mark and the unregistered mark). It is a common law tort which can be used to enforce
unregistered trade marks.
The instant case is for enforcement of registered trade marks. Furthermore, going by the
authorities, five characteristics which must be present in order to create a valid cause of action
for passing off are:
made by a trader in the course of trade,
to prospective customers of his or ultimate consumers of goods or services supplied by
which is calculated to injure the business or good will of the trader (in the sense that it
is a reasonably foreseeable consequence), and
which causes actual damage to a business or good will of the trader by whom the action
is brought or will probably do so.
See: (1) Spalding (AG) & Bros –Vs- AW Gamage Ltd & Anor (1915)
32 RPC 273, HL
(2) Reckitt & Coleman Ltd –Vs- Borden Inc.  1 WLR 491.
In the instant case, it is very clear to me that the defendant’s act of importing the goods in
question amounted to an infringement of the plaintiff’s trade marks. The possibility of the
infringement based on a registered trade mark being unlikely to succeed does not, therefore,