THE REPUBLIC OF UGANDA
IN THE HIGH COURT OF UGANDA AT KAMPALA
MISCELLANEOUS APPLICATION NO 256 OF 2011
(ARISING FROM CIVIL SUIT NO 176 OF 2011
INTERCONSUMER PRODUCTS LTD)….................................... APPLICANT
NICE AND SOFT INVESTMENTS (2003) LTD)…..................... RESPONDENT
BEFORE HONOURABLE MR JUSTICE CHRISTOPHER MADRAMA
The issue in the objection of the respondent’s counsel is whether certain products should be exhibited in court for comparison as prayed for by the applicants counsel during the hearing of the application. The respondent’s objection is founded on rule 8 of the schedule to the Commissioner for Oaths (Advocates) Act cap 5 laws of Uganda.
Rule 8 thereof provides as follows:
"All exhibits to affidavits shall be securely sealed to the affidavits under the seal of the Commissioner and shall be marked with serial letters of identification."
The Respondents counsel contended that because the products were not annexed to the affidavit, exhibiting the products through counsel offended rule 8 cited above and for that reason the products the applicants counsel sought to produce in court could not be admitted in evidence. Counsel Yesse Mugenyi on the other hand submitted that the products could be exhibited because examination of the products themselves was necessary in a “passing off” action. He referred me to the ruling of the Commercial Court Hon. Lady Justice Stella Arach in the case of NAPRO INDUSTRIES LTD VS FIVE STAR INDUSTRIES AND ANOTHER HCMA 773 of 2004 at pages 7 paragraph 2 thereof where he stated that the products themselves were exhibited. He submitted that where matters of passing off are raised the court is enjoined to look at the products and ascertain whether the products have a similar get up to determine the likelihood of deception or passing off as the applicants products.
I have considered the submissions of both counsel and perused the authorities cited. Page 7 of the authority cited by Yesse Mugenyi contains his own submissions in the case of Napro (Supra) but not the ruling of the court. However at page 8 it is clear that in the application the court examined the actual products produced by counsel for comparison before it made its finding in the application. In any case there was no objection to the admission of the products for comparison.
The application of the applicant is brought under order 41 rules 1, 2 and 9 of the Civil Procedure Rules. Rule 1 of order 41 has a head note which reads: "cases in which temporary injunction may be granted." It specifically provides that where in any suit it is proved by affidavit or otherwise:
(a) "that any property in dispute in the suit is in danger of being wasted, damaged, or alienated by any party to the suit, or wrongfully sold in execution of a decree; or
(b) that the defendant threatens or intends to remove or dispose of his or her property with a view to defraud his or her creditors,
the court may by order grant a temporary injunction to restrain such act, or make such further order for the purpose of staying and preventing the wasting, damaging, alienation, sale, removal or disposition of the property as the court thinks fit until the disposal of the suit or until further orders."
As far as rule 1 of order 41 of the Civil Procedure Rules is concerned, the applicant has to prove the ingredients of the application or the grounds of the application by affidavit evidence or otherwise. The words “otherwise” in general incorporate any other lawful means by which the grounds in the application can be proven in court. It follows that evidence may be adduced in any other manner by which evidence may be admitted in court in support of the application.
The applicant filed a suit whose cause of action is the tort of "passing off" at common law. The Trademarks Act 2010 which Act commenced on 3 September 2010, section 1 thereof defines "passing off" to mean "falsely representing one's own product as that of another in an attempt to deceive potential buyers;" section 35 of the Act further saves the common law cause of action of "passing off". Section 35 provides that: "Nothing in this Act shall be taken to affect the right of action against a person for passing of goods or services as the goods and services of another or the remedies in respect of the right of action."
The applicant’s application can only be an application to prevent the respondent from falsely representing its product as that of the applicant to forestall likelihood of deception of potential buyers. It is therefore essential for the applicant to prove that the respondent's products are likely to deceive its customers. The court can decide the likelihood of deception or misleading of potential customers of the application inter alia through comparison of the applicant’s products with that of the respondents in terms of the packaging and general getup.
The nature of a passing of action is defined in the case of Reckitt and Colman Products Ltd v Borden Inc and others  1 All ER 873 per Lord JAUNCEY OF TULLICHETTLE between pages 889 – 890. That a passing of action is to ensure the rights that a man is not to sell his own goods under the pretence that they are the goods of another man and a misrepresentation achieving such a result is actionable because it constitutes an invasion of proprietary rights vested in the plaintiff. Secondly it is essential to prove reputation or good will, because the law protects the good will. However as far as a registered trade mark is concerned, the fact that the proprietary right which is protected by the passing off action is in the goodwill rather than in the get-up distinguishes the protection afforded by the common law to a trader from that afforded by statute to the registered holder of a trade mark who enjoys a statutory protection thereof.
Consequently, similarity in the getup of products may amount to passing off at common law because of the effect of being likely to deceive potential customers that the goods sold under a similar getup are the goods of the plaintiff. All the plaintiff needs to prove is that it’s get – up has acquired distinctiveness associated with the plaintiff goods through use over time. Secondly passing off requires evidence of actual sale of goods as that of the plaintiff. The trademarks Acts or Statute gives the right of exclusive use of the Trade Mark. Passing off is in the goods rather than in the mark. Passing off is a distinct cause of action arising from the sale of goods as that of another person though similarity may amount to passing off at common law.
Consequently the applicant may prove similarity of products by affidavit or otherwise. Secondly the similarity to a registered trade mark enjoys statutory prohibition of its imitation which imitation may deceive. The term “otherwise” under order 41 rule 1 of the Civil Procedure Rules must be restricted to methods accepted by the rules of evidence to prove the ingredients in the rule. The rules of evidence allow evidence by admission or by production of documents or exhibits through a witness. Because the products were not annexed to the affidavit as pictorial depiction or photos, as required by rule 8 of the Schedule to the oaths Act, counsel has the option of calling a witness under order 41 rule 1 to prove the ingredients of this application otherwise than by affidavit. If the pictures or photos had been annexed, the actual product represented by the photo or trademark annexed can be admitted. However I agree with the respondent that counsel for the applicant is not a witness and should not be permitted to produce evidence not attached to the affidavit which is a statement on oath except by admission of the opposite side of documents or exhibits.
This position is further strengthened by the Advocates (Professional Conduct) Regulations statutory instrument 267 – 2 which expressly forbids an advocate to appear in any matter before a court or tribunal in which he or she has reason to believe that he or she will be required as a witness to give evidence, whether verbally or by affidavit. Moreover the regulations further provide that whenever it appears during the hearing that an advocate will be required as a witness to give evidence whether verbally or by affidavit, he or she shall not continue to appear in the matter. (See regulation 9 thereof).
For the above reasons the objection of the respondents counsel is sustained. The applicant should abide by the rules of admission of evidence in a court of law.
Costs shall be in the cause. Ruling delivered in court the 13th day of July 2011.
Hon. Mr. Justice Christopher Madrama
Ruling delivered in the presence of:
Bamwite Edward for the defendant,
Yesse Mugenyi for the Applicant,
Ojambo Makoha Court Clerk,
Patricia AkanyoCourt Recording Assistant
Hon. Mr. Justice Christopher Madrama