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Article

No need for proving actual confusion in trademark infringement: A lesson from the Pipi Kifua Case.

September 01, 2022

Introduction 

The High Court of the United Republic of Tanzania on 30/05/2022 issued its judgment on a Commercial Case No. 132 of 2018 between Kenafric Industries Limited vs. Lakairo Industries Group Co. Ltd & 3 others.  In this case, the court discussed and emphasized on two key principles of trademark protection in Tanzania.   

In this case the issues were:

  1. Whether the defendant infringed on the plaintiff’s trademark rights;
  2. Whether the defendant passed off any of the plaintiff’s goods;
  3. Whether there existed a distributorship agreement between the parties;
  4. Whether the plaintiff suffered damages and to what extent;  and
  5. To what reliefs were the parties entitled.

Facts of the case

It was the Plaintiff’s (Kenafric Industries Limited) case that the defendants (Lakairo Industries Group Co. Ltd, Lakairo Investment Co. Ltd, Lameck Okambo Airo, Registrar of Trade and Service Marks and Attorney General) had infringed its intellectual property rights. Investment Co. Ltd and Lameck Okambo had passed off the products in respect of which the Plaintiff had registered marks. The Plaintiff also added further that the defendants had infringed the proprietary trademarks in respect of the same products.

On the other hand, the plaintiff claimed a complaint to the Registrar of Trade and Service Marks and Attorney General for the registration of the trademark that infringed their trademark as far as the protection of intellectual property is concerned. Henceforth, called for legal proceedings to be instituted against them.

The intellectual property rights in question here were: The plaintiff’s trademarks 'Pipi Kifua', 'Special Veve' and 'Orange Drops' against the defendants’ trademark Lakairo’s 'Super Veve', 'Lakairo Pipi Kifua' and 'Ki Orange Drops'.

Court’s Judgement

After reviewing the parties’ arguments and adduced evidences, the court arrived to a conclusion that was in favor of the plaintiff.
The court held that the defendants’ acts constituted infringement of trademark rights of the plaintiff for the defendants’ goods bearing the names Ki Orange Drops, Ki Pipi Kifua and Ki Special Veve. The court was not satisfied by the defendants’ response and defenses.

In return the defendants (1st, 2nd and 3rd) were ordered to:

  1. cease and desist from infringing upon the Plaintiff's trademarks and passing off their goods;
  2. withdraw from the market and destroy on oath, the existing products, packages, advertisements and branding materials in the names of 'Pipi Kifua', 'Special Veve' and 'Orange Drops';
  3. pay general damages of Tanzania Shillings Two Hundred Million (TZS 200,000,000/-) to the Plaintiff;
  4. pay the Plaintiff, an interest of 7% per annum on the decretal sum from the date of judgment to the date of payment in full; and
  5. pay the cost of the suit.
 
The Fourth Defendant, the Registrar of Trade and Service Marks was ordered and directed to expunge from the Register of Defendant's trademark No.s TZ/T/2017/1407 Special Veve, TZ/T/2018/1616 Lakairo Pipi Kifua and Ki Orange Drops, all in Class 30. 

Emphasized issues and trademark principles

  • Passing Off and the Three Part Test.

 
The defendants involved themselves in selling products in way of representing themselves as if they were the plaintiff. As a result, the plaintiff business was affected. Adding to that, the defendants were also selling products that were of low quality, a factor that damaged the image or reputation of the plaintiff in the market.
 
In their coming to conclusion and resolution, the court attempted to determine whether the plaintiff’s allegations or complaints were affirmative. The court here employed and referred to the Three-part test. That is to determine whether the three elements could be proven in favour of the plaintiff’s complaints or otherwise.  The court proved the elements existence of goodwill; the deception of the public due to a misrepresentation; and actual or potential damage to the plaintiff. As such, the defendants was held liable for passing off. 

  • The principle of confusion of trade marks

 
The court was in consideration of the writing of Mellor J, Kerly's Law of Trade Marks and Trade Names, 15th Ed, Sweet & Maxwell, 2011. According to the writing, in the issue of confusion of trademarks, the court ought to determine whether or not there is likelihood of confusion. In view of that, it is not necessary for the claimant to prove actual confusion at all. Where, in respect to this the court managed to make a determination on whether or not there was likelihood of confusion. The court observed and came to a conclusion that there indeed was confusion. The court supported its observations with the case of SABUNI DETERGENTS LIMITED VS. MURZAH OIL MILLS LIMITED, Commercial Case No. 256 of 2001, High Court of Tanzania (Commercial Division) at Dar es Salaam (Unreported). 

  • Distributorship agreement

The court also brought forward a key factor on distributorship agreements. The court stated that for there to be a distributorship agreement, evidence had to be put forward if one is claiming that there is a distributorship agreement. The court also added that a mere business relationship between parties cannot constitute a distributorship agreement in the absence of an express written agreement.

  • Suffered damages

In this case the plaintiff claimed specific damages amounting to TZS 3,971,392,942. The court, in respect of the damages, made a clarification in the suffered damages principle. That is, in instances which specific damages are claimed, the claiming for specific damages ought to be supported by evidence indicating losses for those specific damage claims. As a result, failure to produce evidence supporting specific damages claimed will mean that the claimed damages will not be awarded.
 
 
 
Mkama Kalebu

Mkama Magoti Kalebu is the Managing Partner, Head of the Intellectual Property, Technology & Me...