INTRODUCTION
TheHigh Court of the United Republic of Tanzania on 30/05/2022 derived itsjudgment on a Commercial Case No. 132 of 2018 between Kenafric IndustriesLimited vs. Lakairo Industries Group Co. Ltd & 3 others. In the case, the court has discussed andemphasized on two key principle of trademark protection in Tanzania.
Inthis case the issue was:-
i. Whether the defendant infringed on the plaintiff’s trademark rights;
ii. Whether the defendant passed off any of the plaintiff’s goods
iii. Whether there existed a distributorship agreement between the parties
iv. Whether the plaintiff suffered damages and to what extent and
v. To what reliefs are the parties entitled.
FactsPremised to this Case
It is the Plaintiff’s (Kenafric Industries Limited)case that the defendants (Lakairo Industries Group Co. Ltd, Lakairo InvestmentCo. Ltd, Lameck Okambo Airo, Registrar of Trade and Service Marks and AttorneyGeneral) have infringed his intellectual property rights. Investment Co. Ltdand Lameck Okambo have passed off the products in respect of which he hasregistered marks. The Plaintiff adds further that they have infringed theproprietary trademarks in respect in respect of the same products.
On the other hand, the plaintiff claims a complaint tothe Registrar of Trade and Service Marks and Attorney General for theregistration of the trademark that infringes his trademark as far as theprotection of intellectual property is concerned. Henceforth, calls for a legalproceeding to be instituted against them.
The intellectual properties in question here is: Theplaintiff’s trademarks Pipi Kifua, Special Veve and Orange Drops against thedefendants’ trademark Lakairo’s Super Veve, Lakairo Pipi Kifua and Ki OrangeDrops.
Court’s Judgement
After reviewing parties’ arguments and adducedevidences, the court arrived to a conclusion in favor of the plaintiff.
The court held the defendants’ acts to constitute the infringementof trademark rights of the plaintiff for the defendants’ goods bearing the nameKi Orange Drops, Ki Pipi Kifua and Ki Special Veve. The court was not satisfiedwith the defendants’ reply and defenses.
In return the defendants (1st, 2ndand 3rd) were ordered to:-
i. cease and desist from infringing upon the Plaintiff's trademarksand passing off the goods;-
ii. withdraw from the market and destroy on oath, the existingproducts, packages, advertisements and branding materials in the names of"Pipi Kifua" "Special Veve" and "Orange Drops";
iii. pay general damages of Tanzania Shillings Two Hundred Million(TZS 200,000,000/-) to the Plaintiff,
iv. pay the Plaintiff, an interest of 7% per annum on thedecretal sum from the date of judgment to the date of payment in full and
v. pay the cost of thesuit.
The Fourth Defendant, the Registrar of Trade andService Marks was ordered and directed to expunge from the Register ofDefendants’ 1, 2 and 3 Trademarks, Trademark No. TZ/T/2017/1407 Special Veveand Trademark No.TZ/T/2018/1616 LAKAIRO Pipi Kifua, all in Class 30.
Emphasized issues and trademarkprinciples
i. Passing Off and the ThreePart Test.
Thedefendants involved themselves selling products in way of representingthemselves as if they are the plaintiff. As a result, the plaintiff business isaffected. Adding to that the defendants were selling products that are of lowquality, something which damages the image or reputation of the plaintiff inthe market.
As bringingthis to conclusion and resolution, the court attempt to determine whether theplaintiff’s allegations or complaints are affirmative. The court here employedand referred to the Three-part test.That is to determine whether the three elements can be proved in favour of theplaintiff’s complaints or otherwise. Thecourt proved the elements existenceof goodwill; the deception of the public due to a misrepresentation; and actualor potential damage to the plaintiff. Henceforth, the defendants was heldliable for passing off.
ii. The principle of confusionof trade marks
The court was in consideration of the writing, MellorJ, Kerly's Law of Trade Marks and Trade Names, 15th Ed, Sweet & Maxwell,2011. The writing is of the view that, in the issue of confusion of trademarksthe court is to determine whether there is likelihood of confusion. Stressingthat, it is not necessary for the claimant to prove actual confusion at all.Where, in respect to this the court did a determination on whether there islikelihood of confusion. The court observed and came into conclusion, thatthere is confusion. The court supported its observation with the case of SABUNIDETERGENTS LIMITED VS. MURZAH OIL MILLS LIMITED, Commercial Case No. 256 of2001, High Court of Tanzania (Commercial Division) at Dar es Salaam(Unreported).
iii. distributorship agreement
The court has brought forward a key factor fordistributorship agreement. The court stated that, for there to be adistributorship agreement an evidence is to be proved if one is claiming thereis a distributorship agreement. The court added that, a mere business relationshipbetween parties cannot constitute a distributorship agreement in the absence ofexpress agreement.
iv. Suffered damages
In this case the plaintiff claimed specific damagesthat amounts TZS3,971,392,942. The court in respect to this, made a clarification in thesuffered damages principle. That is, in instances which specific damages areclaimed the claiming for specific damages is ought to bring forward evidencesthat support for his specific damages claims. That is to mean, failure to do sospecific damages claimed will not be awarded.
Aboutthe Author.
Mkama Magoti Kalebu is the Managing Partner atENDO & Co. Advocates. He is an advocate of the High Court of Tanzania,Notary Public and Commissioner for Oaths. He is an Advocate of the High court of Zanzibar; Member of The PanAfrican Lawyers Union (PALU) and a Member of the East Africa Law SocietyIntellectual Property Committee.
Mkama hold a Master of Intellectual Propertyfrom the University of Dar es Salaam. He leads the Intellectual Property,Technology & Media, Telecommunications and Data Protection Practices teamat ENDO & Company. He handles both contentious and non-contentious mattersin the areas of Corporate & intellectual property ("IP"), media,information technology ("IT"), data protection and telecommunicationslaw, and has extensive experience working on regulatory, transactional,enforcement and advisory projects in these areas, counting among his clients’multinational companies, listed corporations and government regulators.
Contacts:
Email: mkama.kalebu@endowoadvocates.co.tz
Mob/WhatsApp:+255657577055
Tel:255769782926