In a recent matter before seasoned IP judge Justice Christopher Madrama sitting in the Commercial Division of the High Court of Uganda at Kampala, Interconsumer Products Ltd. (the applicant) applied for a temporary injunction to restrain the servants and/or agents and/or distributors of Nice and Soft Investments Ltd. (the respondent) from manufacturing, selling or exposing for sale or in any way dealing in cosmetics using the names “Nice & Soft”. The applicant is the assignee of the “Nice & Lovely” trade mark registered as “Britannia Nice & Lovely” by the assignor, Britania Cosmetics Ltd.
The essence of the applicant’s case is that the colouring and the whole get up or trade dress of the respondent’s products “Nice & Soft” are almost the same as its products under the “Nice & Lovely” mark.
The applicant has been trading in cosmetics known as “Nice & Lovely” since 2003 and has acquired a substantial reputation. In this regard, the applicant alleged that the respondents, without any form of authority, are selling cosmetics goods in Uganda under the mark “Nice & Soft” and have attempted to register a trademark under the said names to the detriment of the applicant. The applicant averred that its trademark is in danger of being wasted and irreparably damaged by virtue of such use by the respondent who is selling inferior goods similar to those of the applicant. Therefore the respondent’s conduct if not restrained will cause irreparable loss to the applicant’s trademark for damage alone cannot atone if an interim order is not issued.
The judge restricted himself to the trademark certificate submitted into evidence and noted that the applicant registered a combination of the words with exclusivity given to the combination of words “Britania Nice & Lovely” not just “Nice & Lovely”. To this end, the judge appeared to be persuaded by the respondent’s arguments regarding the combination of the words.
The judge noted that the trade mark certificate submitted did not indicate what colour it is. It was a black and white photocopy and the colour combination cannot be ascertained. In this connection, the judge stated that in the absence of a copy of the coloured picture or photo of the trade mark lodged with the Registrar of Trademarks which trademark is the subject of assignment to the applicant, it cannot be said that any particular get – up comprising of any combination of colours or other designs such as the baby, or other designs and colours are part of the registered trade mark relied on by the applicant.
The judge observed that the applicant has not pleaded whether he has or has not objected to the respondent’s application for registration of the words “Nice & Soft”. In light of this fact, the judge stated that the applicant should indicate why it was desirable to come straight to the High Court by passing the Registrar of Trademarks.
Therefore the court concluded that granting the injunction would “interfere with the powers of the Registrar of Trademarks who has statutory powers to sieve which marks may be registered in a matter that remains pending before him or her.” Therefore the injunction that would be granted would be “premature and would interfere with the powers of the registrar without the court being seized with all the relevant facts of the said application.”
Furthermore the court found that the evidence adduced showed that the trademark in issue is with respect to a combination of words and therefore it could not make a finding on passing-off without the accompanying trade dress in evidence. In addition, the learned judge therefore noted that granting the temporary injunction solely depended on a finding on whether the words “Nice & Soft” are similar to the words “Nice & Lovely” or are likely to lead to confusion which is a finding on the merits and the main matter in controversy therefore it should be left for determination in the main suit.
In light of the above, the court rightly dismissed the application for a temporary injunction in respect of alleged trade mark infringement and passing-off.