defined as “a sign or mark or combination of signs or marks capable of being represented
graphically and capable of distinguishing goods and services of one undertaking from that of
another undertaking”. The statutory definition of “passing off” has added another approach in
wording of the definition by stating that the defendant falsely represents the goods as that of
another in an attempt to deceive potential customers. In this definition it is not essential to prove
that there was an actual sale of the goods as that of another though an attempt to do so has to be
shown. Secondly there has to be a false representation.
From the definition it is essential to show that there is a reputation and good will in
trademark acquired over time. The parties have not properly defined the terms trademark
purposes of this application. Is the complaint of the plaintiff/applicant in the use of
trademark name, the getup or both? As far as the trademark attached as annexure “A” to
affidavit of Esther Kilonzi is concerned, it has the words:
the
for
the
the
“ Britania
Nice & Lovely
Petroleum Jelly
For your family
110 g
Store in a cool dry place”
The Registrar of Trademarks in the certificate of registration of trademark specifies that this
trademark shall give no right to the exclusive use of the words PETROLEUM JELLY FOR
YOUR FAMILY”, “100g”, “STORE IN A COOL DRY PLACE”. It was registered in part “A”
in the names of Britania Cosmetics Ltd on the 8th of August 1996 in respect to body lotions,
perfumes, and body jelly.
The deed of assignment to the applicant is by Britania Allied Industries Limited which is the
assignee of Britania Cosmetics Ltd the owner of the Trade Mark.
I have further noted that paragraph 2 and 3 of the affidavit in rejoinder of Charles Njenga avers
inter alia that the applicant is a manufacturer of cosmetics known as “Nice & Lovely”. He
attached the trademark certificate, its renewal and certificate of assignment dated 10th February
2009 to the applicant. What were being assigned are the proprietary rights to Trademark No.
20189 registered in part A in respect of, body lotion, perfumes and body jelly.
The trademark referred to above includes the names “Britania Nice & Lovely” and not just “Nice
& Lovely”. Secondly it is the combination of words that is protected by law. Counsel for the
applicant made a strong submission as far as the trade dress of the respondent‟s products is
concerned. The trade dress or get-up counsel referred to are attached to paragraphs “F” and “G”