Injunctive relief and damages granted for infringement of NICE

In Nice House of Plastics Ltd v Lubega (HCT-00-CC-CS-0695-2006, unpublished), the Commercial Division of the High Court has found that Hamidu Lubega had infringed Nice House of Plastics Ltd's trademarks NICE and NICE TOOTH BRUSH by importing toothbrushes bearing the marks into Uganda.

Nice House sued Lubega for trademark infringement and passing off. The thrust of Nice House's case was that Lubega had imported and intended to sell and distribute or dispose of toothbrushes bearing Nice House's registered trademarks NICE and NICE TOOTH BRUSH. Nice House attempted to serve process on Lubega at the address indicated in the import documents. The court made an order for substituted service, but the advertisement in the newspapers elicited no response. Accordingly, judgment was entered against Lubega on February 23 2007 and the suit was set down for formal proof under the provisions of 0(9)(r)(8) of the Civil Procedure Rules.

Nice House sought the following types of relief:

• a permanent injunction restraining Lubega from using the marks NICE and NICE TOOTH BRUSH along with the name 'Nice House of Plastics';
  
  
• a permanent injunction restraining Lubega from continuing to infringe the marks; and
  
  
• an order that Lubega deliver the infringing goods to Nice House.

The company secretary of Nice House testified that Nice House owns the registered trademarks NICE and NICE TOOTH BRUSH for toothbrushes and packaging of toothbrushes (Registrations 27492 and 27487) in Classes 16 and 21 of the Nice Classification. This was confirmed by the assistant registrar of trademarks. The court was thus satisfied that Nice House is the proprietor of the trademarks NICE and NICE TOOTH BRUSH in Uganda.

With regard to whether the import of the 25 containers constituted trademark infringement, the court held that Nice House first had to show that it had rights in the trademarks at issue. The court found that Nice House had demonstrated that the trademarks had not been assigned to any registered users or third parties. Moreover, the get-up of the toothbrushes seized by the Uganda National Bureau of Standards was almost identical to that of Nice House's toothbrushes; therefore, there was a likelihood of confusion between the goods of Nice House and the imported goods. As Lubega had used the marks at issue without the consent of the registered owner, the court found that Lubega had infringed Nice House's trademarks.

With regard to the passing off claim, under established case law (see Spalding (AG) & Bros v AW Gamage Ltd ([1915] 32 RPC 273 HL) and Reckitt & Coleman Ltd v Borden Inc ([1990] 1 WLR 491), a plaintiff must demonstrate that there was a misrepresentation which:

• was made by the defendant in the course of trade;
  
  
• targeted prospective customers or end consumers of goods or services supplied by the defendant;
  
  
• aimed to injure the business or goodwill of the plaintiff (in that it was a reasonably foreseeable consequence of the misrepresentation); and
  
  
• caused actual damage to the business or goodwill of the plaintiff.

Nice House failed to provide evidence demonstrating the goodwill or reputation of its products. It also failed to show that Lubega had made a misrepresentation to the public, as there was no evidence that the goods had been circulated in the country. Therefore, although Lubega might have intended to pass off his goods as those of Nice House, the court held that a case of passing off had not been made out.

Finally, the court held that a trademark owner which successfully shows that there is a likelihood of confusion between its products and the infringing goods is entitled to both injunctive relief and damages from the infringer. The court thus granted the injunctive relief sought by Nice House and ordered that all the infringing goods be delivered to Nice House in order to be destroyed under the supervision of the Uganda Revenue Authority and the Uganda National Bureau of Standards. In addition, the court awarded damages totalling NUSh5 million with interest at court rate from the date of the judgment.

Paul Asiimwe, Sipi Law Associates, Kampala