Bic awarded damages based on inconvenience

In Société Bic Anonyme de Droit Français v Wenbara Trading Company Ltd (HCT-00-CC-CS-0704-2006) [2008] UGCommC 29, June 4 2008), the High Court of Uganda has ruled in favour of Société Bic Anonyme de Droit Français, the owner of the BIC trademarks.
Bic filed suit against Wenbara Trading Company Ltd for importing 852 cartons of counterfeit pens bearing the BIC trademarks. Before the court, Bic was able to show that:
  • it was the registered owner of the BIC trademarks at all material times; and
  • a consignment of counterfeit BIC pens imported by Wenbara was detained by the Uganda Revenue Authority.
Bic produced evidence that it was unable to reach settlement terms with Wenbara. Justice FMS Egonda-Ntende held as follows: 
"I am satisfied that the case for trademark infringement has been made out. The 852 cartons of pens imported by the first defendant are marked with the plaintiff's trademark and logo. The goods were clearly not made by the plaintiff or its authorized agents, although the goods were held out to be made by the plaintiff’s authorized agent. The plaintiff must succeed in its prayer that the said cartons of counterfeit Bic pens be delivered up to the plaintiff for destruction."
The court found that as the goods had never been put on the market, it was unable to see how Bic's goodwill had suffered. Consequently, it did not award damages for such harm. Nonetheless, the court awarded damages based on the inconvenience caused by the legal suit, holding as follows: 
"The plaintiff and its authorized agent must have been put to great inconvenience. The agents are based in Kenya. The officials had to travel to and from Uganda on these matters prior to the institution of the suit. All that would have been unnecessary had the first defendant not engaged in the conduct complained of."
Therefore, the court awarded Bic NUSh10 million (approximately $6,400) in general damages for inconvenience, as well as the costs of the suit. 
This case was relatively straightforward and uncontested, but it is arguably the first time that a Ugandan court has awarded damages based on inconvenience.
Darren Olivier, Bowman Gilfillan Inc, London

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