Learned counsel for the applicant argued that the applicant has two causes of action namely the
tort of passing off and infringement of the applicant‟s trademark. Learned counsel relied on the
decision of honourable Justice Bamwine in the case of Napro Industries ltd vs. 5 Star
Industries Ltd HCC 325 of 2005 for the definition of a passing off action. “Passing off” actions
are confined to the deceptive use of trade names, marks, letter and other indicia. The principle
underlying this action is the common law adage that a man is not to sell his own goods under the
pretence that they are the goods of another man.” Secondly a “get up” was defined in the case as
the visual features which distinguish a trader‟s goods by the packaging thereof. It is the badge of
the plaintiff‟s goods and associates the goods with the plaintiff in the mind of the public. Learned
counsel submitted that it is the duty of a judge to reach a decision upon comparing the products
whether the plaintiffs goods so nearly resemble the ones complained of as to be likely to deceive
or cause confusion in the minds of the public.
The second cause of action of the applicant is that the applicant by using the word “Nice & Soft”
on their trade dress for cosmetic products, are infringing the trademark “Nice & Lovely”. A
registered trademark is protected in the syllables. In the case of Parke Davis & Co Ltd v Opa
Pharmacy Ltd [1961] 1 EA 556, where the court found that the registered trademark Capslin
was infringed by the respondent selling a similar ointment under the name Capsopa because the
first two syllables were identical and it was likely to cause confusion. Accordingly because the
applicant has registered has the words “Nice &”, the respondent‟s first two letters are the same.
The word “Nice &” is registered by the applicant and the mere fact that it is registered has
exclusive rights to the words “Nice”. Annexure A, B, C, D, and E to the affidavit in rejoinder
shows that the trade mark “Nice & Lovely” is valid. The ruling of honourable lady Justice Stella
Arach lays the test to be applied in such an application in MA 773 of 2004 Napro Industries vs.
Five Start Industries ltd. In the case of Britannia L vs. Sun Confectionary industries Hon
Geoffrey Kiryabwire in MA 288 of 2005, held that test required in an action of this nature for the
granting of a temporary injunction is now fairly well settled. The first test is whether there are
serious questions to be tried, which test is a variant of the prima facie case test. Counsel
submitted that the applicant has availed and compared the products and that they have a similar
get up. Hon Justice lady Justice Stella Arach held in the Napro case (supra) that the facts that the
products by the parties are similar and were being sold using a similar trade name capable of
causing confusion in the public was sufficient to show that the applicants case raises serious
issues that need to be tried by the court.
The second test set up is whether the applicant will otherwise suffer irreparable losses that
cannot adequately be compensated by an award of damages if the injunction is not granted.
Learned counsel contended that the applicant cannot in the circumstances tell how much damage
has been done or is likely to be done. Counsel further referred to the case of Hassanali Sachoo
vs. Jonkopings 1958 EA 464 which holds that in cases of passing off it is very hard to compute
damages. Even if the respondent is ordered to render an account of their profits, they won‟t be