In this landmark case presided over by Justice Flavia Senoga Anglin on June 6, 2017, Vision Impex Ltd, the plaintiff, raised critical concerns regarding trademark infringement and its impact on brand reputation. The central issue revolved around the defendant’s use of marks closely resembling those of the plaintiff, potentially causing confusion among consumers. This case serves as a stark reminder to Uganda’s business community that unauthorized use of a registered trademark in commerce—whether through reproduction, counterfeiting, copying, or colorable imitation—constitutes infringement. Such actions, which are likely to cause confusion or deception, are strictly prohibited without the consent of the registered trademark owner.
FACTS OF THE CASE
The plaintiff, a Limited Liability Company and the registered owner of the ABC "Feathers" Sanitary Pads trademark, filed a lawsuit against the defendants for infringing and passing off their trademark following that the defendant had imported a consignment of Fealthers sanitary pads which the plaintiff alleged was infringement and passing off of their own trademark, Feathers sanitary pads.
The plaintiff, being the exclusive distributor of the sanitary pads, asserted that the defendants imported a consignment of similar pads, intending to mislead the public and cause potential damage.
The defendants' consignment was seized by authorities on suspicion of counterfeiting and unauthorized use of standards. The plaintiff sought various remedies, including a permanent injunction, impounding and destruction of the infringing goods, damages, an account of profits, and costs. Interlocutory judgment was entered against the defendants for non-appearance, and formal proof proceeded with a witness confirming the similarity between the plaintiff's and defendants' products.
The plaintiff argued that the public could not differentiate between the products, leading to a decline in sales and damages to the brand. The plaintiff requested judgment in their favor and all sought remedies. ISSUES The principle issue for determination was whether the defendant's importation and sale of fealthers sanitary pads was an infringement of the plaintiff's trademark. HOLDING
Court found for the plaintiff, that the defendant's fealthers sanitary pads amounted to infringement and passing off of the plaintiff's Feathers sanitary pads given that the marks on the defendant's goods were very similar to those on the plaintiff's goods.
Flavia, J., clarified the legal position under Section 36(2) of the Trade Marks Act 2010 that,
Under Section 36(2) of the Trade Marks Act, infringement occurs when a person, not the owner or a registered user, uses a mark identical or closely resembling a registered trademark, likely to cause confusion in the course of trade.
That, Decided cases, such as Angelo Fabrics (Bolton) Ltd vs. Africa Queen Ltd and Standard Signs (U) Ltd vs. Standard Signs Ltd, establish that the test for infringement is the likelihood of confusion among reasonable customers. In the current case, the marks on the defendant's goods closely resemble those of the plaintiff, causing potential confusion in terms of color, design, sound, and belonging to the same class of goods (sanitary pads).
Despite minor differences, the goods are visually and conceptually similar, leading to the likelihood of confusion. The defendants, who did not defend the suit, are deemed guilty of trademark infringement. The consignees named in the importation documents are considered owners of the goods under established legal principles.
The learned Justice further added that,
The goods imported by the defendants were deceptively similar to the plaintiff's, posing a likelihood of confusion among reasonable users of sanitary pads. The defendants, who did not defend the suit, were deemed guilty of trademark infringement. Sansa Ambrose and Goldman Logistics Import and Export, named as consignees in importation documents, are considered owners of the 2049 cartons of "Featlhers" sanitary pads under legal principles.
The plaintiff argued that the use of the similar mark by the defendants, without consent, could cause confusion, mistake, or deception in commerce. The evidence presented by the plaintiff indicated a risk that the public might associate the defendants' goods with the plaintiff or an economically linked undertaking.
The court held that the likelihood of confusion was high, as the goods are so similar that a customer might assume the products are associated with each other.
In light of these factors, the court concluded that the importation and selling of "Featlhers" sanitary pads by the defendants constitutes an infringement of the plaintiff's trademark "Feathers."
“It is an infringement for any person, without the consent of the registered owner of the trade mark, to use in commerce any reproduction, counterfeit, copy or colorable limitation of a registered trade mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with, which such use is likely to cause confusion, or to cause mistake, or to deceive…”
RATIONALE
The rationale is that it is an infringement for any peers without the consent of the registered owner of the trademark to use in commerce any reproduction, counterfeit, copy or colorable limitation of the registered trademark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with, which such use is likely to cause mistake or to deceive.
APPLICABILITY OF THIS CASE TO UGANDA'S LEGAL SYSTEM: GUARDING AGAINST MISLEADING NAMES.
The landmark case of Vision Impex Ltd vs. Sansa Ambrose & Goldman Logistics has significantly influenced subsequent court decisions in Uganda, particularly in the context of trademark protection and the likelihood of confusion. Notably, the “likelihood of confusion” test has been widely applied, shaping legal interpretations and guiding registrars and businesses alike. A Noteworthy Precedent is the case of A-Class Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB Civil Suit No. 355 of 2020 Whereby the plaintiff, A-Plus Funeral Management Ltd, filed a joint and several claim against the defendants, A-Class Funeral Services (U) Ltd and the Uganda Registration Services Bureau (URSB). The plaintiff sought declaratory orders asserting that the 1st defendant's name constitutes a pass-off of the plaintiff's business name, alleging wrongful and negligent registration. Additionally, the plaintiff sought a permanent injunction against the use of the name "A-Class Funeral Services (U) Ltd" and costs of the suit. Justice Musa Ssekaana held that
This court does not agree that the similar phonetic sound is likely to cause confusion to the public in the funeral service industry.
The customer in the nature of business is generally attentive, discerning, well-informed, reasonably observant and circumspect. Such a user is less likely to be confused as to particulars of a funeral service provider than an ordinary mourner or bereaved customer or someone procuring services on behalf of a bereaved client.
The issue of confusion of marks, names at issue must not be considered from the point of view of the average hurried or confused consumer having an imperfect recollection of the opponent’s mark or name who might encounter the name of the plaintiff.
That does not mean a rash, careless or unobservant purchaser(customer) on one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived.
The standard is not that of people “who never notice anything” but of persons who take more than “ordinary care to observe that which is staring them in the face”. See Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 page 803-811
Personal Opinion. That the test of infringement as laid down in earlier cases is likelihood of confusion. That's to say, the probability that a reasonable customer in the relevant market will be confused or deceived and will believe the infringer's goods or services to come from or sponsored or endorsed by the complainant or that the two are affiliated. CONCLUSION
The case emphasizes:
1. The rights a registered owner of a trademark has over everyone else as regards the use of the same or a similar trademark.
2. One who wishes to register a new trademark ought to be cautious not to come up with an already existing trademark or a trademark similar to an already existing one. By
FARIDAH N. TSWALIK
LLB4
IUIU-MC
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