Muse Af Enterprises Co. Ltd v Billen General Trading Ltd & 2 Ors (Civil Suit No. 102 of 2013) [2015] UGCommC 88 (16 June 2015)

Key Facts

Issues

• The court determined that the 1st and 2nd defendants did not infringe or pass off the plaintiff's trademark, as the plaintiff's registration was fraudulent and the defendants were lawful agents of the trademark owner. Passing off claims failed due to the plaintiff's lack of proprietary connection to the product.
• The court assessed if the plaintiff's use of the PANASUPER trademark in Uganda infringed the rights of the 2nd and 3rd defendants, who hold the trademark in China, and determined that the plaintiff's fraudulent registration negated any infringement claim by the defendants.
• The court ruled that the plaintiff's fraudulent registration invalidated its claims, ordered removal of the trademark from the register, awarded general damages of Shs. 10,000,000 to the 1st defendant, and awarded costs to the defendants. Other remedies like punitive damages were denied.
• The court examined whether the plaintiff's registration of the PANASUPER trademark in Uganda was fraudulent, considering the power of attorney and the OEM cooperation agreement, as well as the plaintiff's lack of bona fide use and the principal-agent relationship with the 2nd and 3rd defendants.

Holdings

• The court ruled that the plaintiff's action did not infringe the 2nd and 3rd defendants' trademark in Uganda because the defendants are not registered proprietors in Uganda and the plaintiff's registration was invalid due to fraud.
• The court ordered the removal of the PANASUPER trademark from the Ugandan register, awarded general damages of Shs. 10,000,000 to the 1st defendant for business interruption, and allocated costs to the defendants. The plaintiff's claims for injunctions and punitive damages were denied.
• The court found that the plaintiff registered the PANASUPER trademark fraudulently, having done so without valid authority from the trademark's registered owner in China and through deceptive means, including a forged OEM agreement and suppression of relevant documentation.
• The court concluded that the 1st and 2nd defendants did not infringe the plaintiff's trademark or commit passing off, as the plaintiff lacks legitimate ownership of the trademark in Uganda and the defendants are lawful distributors of the product.

Remedies

• Interest at 10% per annum was awarded on the general damages.
• Costs of the suit were awarded to the defendants.
• The plaintiff was ordered to pay Shs. 10,000,000 in general damages to the 1st defendant.
• The PANASUPER trademark was ordered to be removed from the Uganda register.
• The court declared that the plaintiff fraudulently registered the PANASUPER trademark.

Monetary Damages

Legal Principles

• The court relied on fiduciary duty principles to find that the plaintiff, as an agent under a power of attorney, exceeded its authority by registering the PANASUPER trademark in its own name, which is prohibited under the principal-agent relationship framework.
• The court approved an Anton Piller order allowing the plaintiff to inspect the 1st defendant's premises and remove unauthorised PANASUPER-branded goods, though this was later found unnecessary due to the fraudulent registration.
• The court used a comprehensive definition of fraud (including 'intentional perversion of truth' and 'suppression of truth') to determine the plaintiff fraudulently registered the PANASUPER trademark, exceeding the power of attorney's authority and acting in bad faith.

Precedent Name

• Shri Chander Mohan Kapoor T/A British Herbal Cosmetics VS Amin Chavania T/A Jaskar Enterprises
• Uganda Broadcasting Corporation vs Simba (K) Ltd
• Auto Garage Vs Motokov
• Friendship Container Manufacture Ltd vs Mitchell Cotts (K) Ltd
• Nassan Wasswa & 9 others vs Uganda Rayon Textiles
• Pheneas Agaba vs Swift Freight
• Ram vs Singh
• Rehema Namuli vs James Mulwana and 3 ors
• Fredrick J.K Zaabwe v Orient Bank & Ors

Cited Statute

• Trademark Rules
• Trademarks Act 2010
• Civil Procedure Rules

Judge Name

Passage Text

• It is ordered that the PANASUPER trademark be removed from the register of trademarks in Uganda.
• It is declared that the plaintiff registered the PANASUPER trademark fraudulently.
• In the result, I find that the defendants have proved to the required standard that the plaintiff registered the PANASUPER trademark fraudulently and that answers issue 1 (a) in the affirmative.