This blogger has come across a recent judgment from Uganda’s Commercial Court in the case of Tuskys (U) Ltd v. Tusker Mattresses (U) Ltd  UGCOMMC 91. In this case, TUSKYS, a Ugandan Company dealing in arts and crafts, sued Tusker Mattresses, a subsidiary of Tusker Mattresses (K) Ltd over infringement of the trademark “TUSKYS”. Tuskys asked the court for damages, costs and interest from Tusker Mattresses for denying it the exclusive use of its trademark. Tuskys also prayed court for an injunction “stopping Tusker Mattresses from using the trademark” which according to the company’s Managing Director was registered in Class 18 for crafts and arts in 2008.
The following facts were agreed upon by both parties:
1. Tuskys is the registered proprietor of “TUSKYS” trademark in Uganda in respect of goods in class 18 (arts and crafts).
2. Tusker is the registered proprietor of the “Time to Go, Tuskys, Your Friendly Supermarket” trademark in Uganda in respect of goods in class 16 and is involved in the business of running supermarket retail chain under their registered trademark.
3. Tusker duly complied with the orders of Hon. Justice Hellen Obura and accordingly rebranded all its shop and items to reflect their registered trademark.
4. Tuskys avers that Tusker’s use of the word Tuskys mark in conduct of their business is an infringement of their trademark for which its reputation and trade pattern has been greatly injured.
Therefore the parties agreed that there were two issues for determination by the court namely:
1. Whether Tusker’s registration and use of trademark registered under No. 31953 in class 16 is an infringement of the Tuskys’s trademark registration No. 31804 in Class 18.
2. Whether the Tuskys is entitled to the reliefs claimed.
On the first issue, the court found for Tusker and stated as follows:
“There is no doubt that the word “TUSKYS” which is the plaintiff’s [Tuskys’s] mark also stands out in the mark used by the defendant [Tusker]. If the two marks are put side by side as demonstrated below the words “Your Friendly Supermarket” in the mark used by the defendant would distinguish the marks because one would know that that of the defendant is a supermarket as the mark suggests.
“Time To Go TUSKYS
Your Friendly Supermarket”.
It is therefore my firm view that if the defendant uses the trademark assigned to it without leaving out the words “Time To Go Your Friendly Supermarket” it would not cause any likelihood of confusion.
However, what gave rise to this suit is the defendant’s abandonment of the mark assigned to it and adoption and use of the mark “TUSKYS” singularly which makes it identical to the plaintiff’s mark. In the application for a temporary injunction I did order the defendant to revert back to the use of the registered trademark “Time To Go TUSKYS Your Friendly Supermarket” and it was reported to court that the order was complied with.
It is therefore my finding that upon compliance with that order, as confirmed to this court, the infringement, if any, occasioned by the use of the word “TUSKYS” singularly would cease forthwith.
It is also pertinent to point out that the plaintiff’s mark is in respect of goods in class 18 and it primarily engages in the business of worldwide advertising, selling, promoting and distributing arts and crafts especially made by women as testified by its managing director. Meanwhile the mark used by the defendant is in respect of goods in class 16 and it runs retail chain supermarkets that deal in assorted goods. It is important to note that neither the plaintiff’s goods whose samples are posted in Exhibit P12 (ii) nor the defendant’s goods bear the mark “TUSKYS”. The marketing channels of the goods are also different since the plaintiff’s is internet based and the defendant’s is supermarket based. I therefore do not see any likelihood of the defendant’s goods being confused as those of the plaintiff.
In the circumstances, it is the finding of this court that the mark used by defendant is neither identical to nor so nearly resembles the plaintiff’s mark and therefore the two trademarks can co-exist in the Ugandan market without any likelihood of deceiving or causing confusion to the consumers of the respective goods.”
On the second issue, the court stated as follows:
“The plaintiff [Tuskys] in its amended plaint prayed for:
(a) An order for a permanent injunction restraining the defendant from any further use of the plaintiff’s registered trademark.
(b) General damages for the suffering occasioned by the infringement of the plaintiff’s trademark.
(c) Interest at court rate.
(d) Costs of the suit.
(e) Any other reliefs as this court may deem fit.
Following my finding that the defendant [Tusker] has not infringed the plaintiff’s trademark, I do find that the plaintiff is not entitled to any of the reliefs it sought from (a) to (c). However, I wish to observe that the defendant prior to the order of this court in Misc. Application No. 4 of 2011 did use the mark “TUSKYS” singularly and this prompted the plaintiff to bring this suit. If the defendant had strictly used the mark assigned to it this suit would have been avoid. For that reason, I will award the costs of this suit to the plaintiff although it has lost the suit.
In the result, the plaintiff’s suit is dismissed and the defendant is ordered to pay costs for the reason stated above. For avoidance of any doubt the defendant is ordered not to ever revert back to the use of the mark “TUSKYS” singularly. It must always use its authorised mark:
“Time To Go
Your Friendly Supermarket”.
A copy of the judgment is available here.