registration per se. Secondly if there is no such objection against the application of the
respondent the applicant should indicate why it was desirable to come straight to the High Court.
In the absence of such an averment the public policy is that the matter should first be determined
before the Registrar who has the statutory mandate to reject registration of similar marks or
marks likely to cause confusion. Moreover the registrar of trademarks is the state expert on
questions of similarity and may be called to give written opinions to the High Court under the
Trademarks Act 2010 where rectification is desired. The option to whether to apply for a remedy
to the high court or registrar of trademarks is further determined by the Trademarks Act 2010
section 63 thereof. An application is made to court where there is an action pending concerning
the trademark, in any other case, the application is made to the registrar. In this case the
application for registration was before the registrar prior to the filing of the suit which suit does
not aver that it is a challenge to registration. To grant an injunction would interfere with the
powers of the Registrar of Trademarks who has statutory powers to sieve which marks may be
registered in a matter that remains pending before him or her. An injunction under the procedure
adopted at this stage would be premature and would interfere with the powers of the registrar
without the court being seized with all the relevant facts of the said application.
More can be said about the Trademarks Act cap 2010 and injunctions. Under the new law
applications for injunctions are filed under section 79 of the Trademarks Act 2010. The ground
under which it is filed are specified in section 79 (1) that “a person whose rights under the Act
are in imminent danger of being infringed or are being infringed may institute civil proceedings
in the court for an injunction to prevent the infringement or prohibit the continuation of the
infringement.” The law further gives an applicant the right to apply ex parte in chambers to the
court for removal from the infringing person‟s premises or control the infringing materials.
However this is for infringement of a trademark without prejudice to a common law right of
action in passing off. In the premises as far as the alleged infringement by use of the words “Nice
& Soft” are concerned, the application fails for not disclosing the necessary materials to
determine a prima facie case for purposes of the grant of an injunction against the use of the
words “Nice & Soft” which use of words are yet to be determined for purposes of registration by
the Registrar of Trademarks.
This leaves the common law tort of passing off. Section 35 of the Trademarks Act 2010 provides
that that nothing in the Act shall be taken to “affect a right of action against a person for passing
off goods or services as the goods or services of another or the remedies in respect of the right of
action” refers.
In the case of Reckitt and Colman Products Ltd v Borden Inc and others (Supra) The
essentials of a common law passing off action summarised by Lord Jauncey of Tullichettle are
that the basic underlying principle of the action is that “a man is not to sell his own goods under
the pretence that they are the goods of another man”. The defendant must have made a
misrepresentation that has deceived or is likely to deceive members of the public into believing
that its goods are that of the plaintiff. It is a prerequisite that the plaintiff‟s goods have acquired a