This blogger has recently received a copy of the High Court’s recent ruling in the case of Weetabix Ltd v. Manji Food Industries Ltd HCCC No. 53 of 2013. As previously discussed in our blogpost here, Weetabix had approached the High Court seeking a temporary injunction restraining Manji Foods, the makers and distributors of Multibix from engaging in any commercial dealings with the product Multibix. According to Weetabix, the application became necessary because despite the ruling of the Registrar of Trade Marks (as highlighted here), Manji Foods has continued to distribute and sell the Multibix product causing damages as result of trade mark infringement. The court found for Weetabix allowing its application for injunction.
A copy of the ruling is available here.
At the core of the ruling by Ogolla J was an unequivocal affirmation of the decision by the Registrar of Trade Marks from In Re TMA No. 66428 “MULTIBIX” Opposition by Weetabix Ltd 31 August 2012 where Weetabix had successfully brought opposition proceedings against the registration of the trade mark “MULTIBIX” in respect of “biscuits” (in class 30) on the grounds of likelihood of confusion contrary to Section 14 of the Trade Marks Act and that “WEETABIX” was a well-known mark under Section 15A of the Act.
According to the learned judge:
“The ideal position would have been for the Defendant [Manji Foods] to cease all actions of trading in the mark Multibix immediately the said Ruling [by the Registrar] was delivered…the Defendant, in defiance of the said Registrar’s Ruling, continued to engage in business as usual. (….) The Registrar’s findings are the findings of a competent tribunal which remains unchallenged.”
A recent commentary by Spoor Fisher (available here) dismisses the High Court’s ruling as “a bit odd”, “unusual”, “clumsy” and that the court’s reasoning contains “apparent flaws”. With respect, this blogger finds Spoor Fisher’s commentary to be misleading and misinformed. While this blogger agrees that the High Court judge did provide clear reasoning on what constitutes a well-known trade mark, it is clear from the ruling that the High Court wholly adopted the findings of the Registrar in the opposition proceedings on the well-known status of “WEETABIX”.
In its commentary, Spoor states:
“An injunction was therefore granted, which is not too controversial. However it is unusual that a company is expected to stop using a trade mark simply because its application is refused. Can it not hope that a High Court judge might find differently to a trade mark hearing officer as it undoubtedly is entitled to do. In short, the court erred in finding that the Registrar’s ruling (in the opposition matter) was binding on the court.”
In reply, this blogger submits that Weetabix were entitled to enjoy the benefits of the Ruling by the Registrar, which includes a clear statement that the Multibix mark was infringing and thus in effect barring Manji Foods from trading in Multibix products. As the learned judge rightly notes, there was no stay of the Registrar’s decision and even though Manji had filed an an application to file an appeal out of time, this application had not been prosecuted.
It is trite law that the High Court is not bound by decisions of tribunals or lower courts therefore any party is entitled to hope that the High Court will reverse the decision of the Registrar. In the present case it is abundantly clear that the High court in relying on the opinion of the Trade marks Expert in the Country in rendering its decision did in no way make the “finding that the Registrar’s ruling (in the opposition matter) was binding on the court” as wrongly understood by Spoor.
Furthermore, it is important to note that this ruling was only with respect to Weetabix’s application for temporary injunctive orders and therefore it is not the final judgment of the court on this matter as falsely proclaimed by Spoor.