Agro Processing and Allied Products Ltd v Said Salim Bahkresa and Co Ltd, Commercial Case No. 31 of 2004, High Court of Tanzania, Commercial Division at Dar es Salaam
Agro Processing and Allied Products Ltd v Said Salim Bahkresa and Co Ltd, Commercial Case No. 31 of 2004, High Court of Tanzania, Commercial Division at Dar es Salaam
Luanda, J.
Date of Ruling: December 15, 2008
Facts
Both plaintiff and defendant are limited liability companies incorporate in Tanzania in the business of maize and wheat flour milling and distribution. The plaintiff applied for a temporary injunction to restrain the defendant from using the word "POA" in labelling, advertising, selling, distributing, circulating, or otherwise in relation to food flour milled, packed, sold, distributed, or circulated by the respondent. The Registrar refused to register the defendant’s trade marks ”SEMBE POA”, “UNGA POA”, and “NGANO POA.” The defendant continued to use their unregistered marks in the sale and distribution of maize and flour. The plaintiff thusly filed suit requesting a perpetual injunction, an order for withdrawal and destruction of the defendant’s products and advertisements, general and punitive damages, and litigation costs. The plaintiff contended that section 31 of the Trade and Service Mark Act 1986 gives a registered proprietor the exclusive right to use the trade mark in relation to the goods because the plaintiff held the certificate of registration. The defendant counter claimed for a declaratory relief, an order compelling the Registrar to withdraw the plaintiff’s monopoly over word “POA,” injunctive relief, general damages, and litigation costs.
Holdings
(i) If the Registrar refuses to register an applicant’s mark, the correct course of action is to apply for an objection to the Registrar within one month from the rejection.
(ii) If the essential feature of a mark has been adopted, additional words or devices do not enable defendants to escape liability for trade mark infringement. (In Saville Perfumery Co. Ltd v June Perfect Ltd and another (1991) 58 R.P.C. 147, H.C.
Decision
The defendant is guilty and liable for the tort of passing off. The plaintiff is owed special damages, general and punitive damages.