High Court considers when infringement and passing-off actions prescribe

In Vitafoam (U) Ltd v Euroflex Ltd (Civil Suit 438/2009, [2011] UGCommC 45, June 2 2011), the Uganda High Court was asked to adjudicate on whether a claim based on passing off and trademark infringement had prescribed because the complaint was brought before the court more than six years after the alleged unlawful activity had commenced.

It is important to note that the alleged unlawful activity had not been a one-off and had continued for a period of time after it had commenced. It also appears that the matter had once been before the courts, but had not proceeded because of a failure to prosecute. A fresh action was then brought over six years after the initial alleged unlawful activity had taken place.

Former state attorney and presiding judge, the Hon Mr Justice Christopher Madrama, set out the arguments before analysing Ugandan and English law on the nature of passing off and trademark infringement:

So long as it is subsisting, a continuous sale of goods by passing off of goods as that of the owner of the trademark is actionable and is a continuing tort or breach or infringement of rights protected by the statute. The continuous breach of the right leads to an accrual of a fresh cause of action by each breach.”

The judge concluded that “… the defendant’s objections that the suit is time-barred is misconceived and is accordingly overruled with costs”.

Darren Olivier, Bowman Gilfillan Inc, Johannesburg 

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