3. Whether there has been a passing off?
4. What remedies are available to the parties?
At trial the plaintiff was represented by Mr. Mugenyi while the defendant was represented by
A.F Mpanga. The plaintiff called two witnesses Mr. Vinay Dwada (PW1) the plaintiff‟s
Managing Director and Ms. Susan Oyella the plaintiff‟s Marketing Executive while the
defendant called one witnesses Mr. Khalifa Mutiso the General Manager of the defendant
company
At the trial the parties placed a lot of emphasis on the get up of the two brands of Marie biscuits.
I will start by reviewing the general arguments of the parties on this.
It is the plaintiff‟s case that a comparison of the biscuit products and their packaging showed that
there is a significant similarity both in the phonetic and visual resemblance.
Counsel for the plaintiff invited court to study the first syllable on the two exhibits which is
“MARIE” and argued that they sound the same and therefore have a likely hood of causing
confusion. He in this regard relied on the case of
Parke Davis & Co. V Opa Pharmacy Limited [1961] EA 556.
In that cases it was held that since the first two syllables in the Trade names used by each of the
parties were identical and there was a resemblance in the containers there was real probability of
confusion and the appellant was entitled to an injunction.
Counsel for the plaintiff further argued that the exhibits of biscuits for both the plaintiff and
defendant tendered in Court are of similar colors and he then made reference to comments in the
text Kerly on Trade Mark 8th Edn (at p.471) where the author stated that where marks are used
in color, it may undoubtedly affect the likely hood of confusion that the colors are or are not the
same which is a circumstance of great importance to passing off.
According to the plaintiff‟s counsel the two exhibits have a series of marks that are so identical
that the public might be inclined to believe that they emanate from the same source. In this
regard the plaintiff made further reference to Kerly on Trade Marks (supra) in which it is stated
that to most persons the eye is not an accurate recorder of visual details and that marks are
remembered rather by general impression or by some significant details other than by any
photographic recollection of the whole.
The counsel for the defendant on his part submitted that the get-up which was the subject of the
suit was that of which a trademark was registered and was not the same as the get-up in exhibit
P2 which was never pleaded. The defendant‟s counsel put up a strong argument for parties being
bound by their pleadings.
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