Decision in MEKAKO Case has significant implications for brand owners

In Anglo Fabrics (Bolton) Ltd v African Queen Ltd (Case HCT-00-CC-CS-0632-2006, February 22 2008), the High Court has held that African Queen Ltd infringed Anglo Fabrics (Bolton) Ltd's registered trademark MEKAKO and passed off its medicated soap products as those of Anglo Fabrics.

The court granted a permanent injunction restraining African Queen from using the mark MEKAKO on its soap and/or other products. The court also ordered that African Queen pay NUSh10 million (approximately $5,800) plus costs to Anglo Fabrics.

The decision is interesting for the following reasons:

• The case was filed on October 16 2006 and judgment was handed down on February 22 2008; a period of 16 months is speedy for a full trial.
  
  
• The court accepted as valid a quote of an assistant registrar (International Property Rights, Ministry of Justice) on assignments: "an assignment [of a trademark] is valid only to confer title after registration with the Registry of Trademarks". This has significant implications for brand owners acquiring or disposing of their trademarks: they are advised to include a separate assignment recordal document (duly stamped) in their completion documents for immediate recordal in Uganda.
  
  
• The court applied recognized tests for determining both the infringement and passing off claims. For example, the court followed the five-prong test established in the English case of Reckitt & Coleman Ltd v Borden Inc ([1990] 1 WLR 491) for determining passing off. However, in applying the tests, the court held that "[trademark] infringement is analogous to the tort of fraud". Fraud generally requires intent (which is absent in the normal test for trademark infringement) and is a crime (which trademark infringement, excluding counterfeiting, is not). The court was also able to establish passing off in a short paragraph, without reference to reputation in the get-up. On the other hand, get-up appeared to form part of the court's reasoning under the infringement test.
  
  
• The court acknowledged that Uganda is a member of the African Regional Intellectual Property Organization (ARIPO) and appeared to infer that a mark which designates Uganda for the purposes of registration is enforceable, ignoring possible shortcomings of ARIPO.
  
  
• The court ordered that interest be payable at the rate of 25% per year.

Darren Olivier, Bowman Gilfillan Inc, London