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denied by the 1st plaintiff. However, they are ineffective on account of being unregistered. A
right in a trademark is conferred on registration in the Register of Trademarks of a person as a
proprietor thereof. The registration of a person as the proprietor thereof is prima facie evidence
of the validity of the registration of the trademark and all subsequent assignments and
transmissions of the same. Therefore the 1st plaintiff had a valid claim in respect of the suit.
Court was satisfied that the sale of the soap under the trademark was an exception to the UNBS
policy. The sale was authorized and/or done with the knowledge of UNBS. Further that the soap
intended for sale by the plaintiffs subsequent to the UNBS prohibition order did not contain any
prohibited substance such as mercury. It meets the UNBS standards, regulations and policy.
In matters of intellectual property, a trademark is a word, phrase, symbol, product feature or any
combination of these that distinguishes in commerce the goods or services of its owner from
those of others. In cases where trademark infringement is alleged, as herein, the infringement
occurs when a suspected infringer uses a mark for goods or services identical or closely related to
those of the plaintiff. The test of infringement is likelihood of confusion. Likelihood of
confusion is the probability that a reasonable consumer in the relevant market will be confused or
deceived, and will believe the infringer’s goods or services come from, or are sponsored or
endorsed by, the complainant or that the two are affiliated. The products in the instant case were
identical in every possible way; and in view of the admitted fact that the defendants imported
into the country a soap product known as Mekako; and in view of the unchallenged evidence that
the importation was done without knowledge and/or authority of the plaintiffs, there was
infringement.
International trademarks are trademarks registered under the international protocols like the
Banjul Protocol for registration under Africa Regional Intellectual Property Organisation
(ARIPO) to which Uganda is a member state but that in such a case, Uganda would have to be a
designated country for purposes of registration of the trade mark. In the absence of any evidence
showing that the mark Mekako used by the defendants had been registered under the relevant
Protocol or that Uganda was a designated member state for purposes of the trademark, the word
‘Mekako’ was not registered as an international trademark so the defendants’ product was not
under the international trademark, if any.
In order to create a valid cause of action for passing off there must be a misrepresentation; made
by a trader in the course of trade; to prospective customers of his or ultimate consumers of goods
or services supplied by him; which is calculated to injure the business or good will of the trader
(in the sense that it is a reasonably foreseeable consequence); which causes actual damage to a
business or goodwill of the trader by whom the action is brought or will probably do so. These
conditions were satisfied in the instant case and therefore the plaintiff is entitled to the reliefs
sought.
Judgement in favour of the plaintiff
Legislation referred to:
Stamps Act Cap 342
Trade Marks Act Cap 217
Cases referred to:
Nanoomal Issardas Motiwalla (U) Ltd v Sophie Nantongo & Others HCT-00-CC-CS-0430-2006
(unreported)
Reckitt & Coleman Ltd v Borden Inc. [1990] 1 WLR 491.
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