This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
High Court of Uganda [2021]: Migoo Industrial and Trading Company (U) Limited v Rida International Industry (U) Limited (Civil Suit No. 359 of 2019) [2021] UGCommC 145
Date of judgment: June 28, 2021
Issuing authority: High Court of Uganda (Commercial Division)
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Industrial Designs; Enforcement of IP and Related Laws
Plaintiff: Migoo Industrial and Trading Company (U) Limited
Defendant: Rida International Industry (U) Limited
Keywords: Industrial design, Technical function, Infringement
Basic facts: The plaintiff’s claim is that it is the registered owner of the trademark MIGOO. Sometime during the year 2012, the plaintiff’s director procured from China an industrial mold for the production of gumboots and began the production of gumboots under the MIGOO trademark. These gumboots are sold in Uganda, the Democratic Republic of Congo, South Sudan, Rwanda, Kenya and Tanzania, among other markets. Around the year 2016, the person that had been contracted in China to design the mold for MIGOO incorporated a company in Uganda named “Rida International Industry Uganda Limited”, and began manufacturing and selling gumboots in the same markets, under the RIDA trademark. The gumboots manufactured and sold by the defendant under that name are identical to those produced by the plaintiff in design, shape, color and sizes, save that the latter’s are cheaper and of a poorer quality. The plaintiff claims that, as a result, the defendant’s activities caused confusion in the market and undercut its sales, thereby causing loss to the plaintiff.
The plaintiff registered an industrial design to protect its gumboots on February 18, 2019, after several years of having manufactured and sold its gumboots. However, the defendant had successfully registered its own industrial design six months prior to that of the plaintiff, on August 28, 2018.
The plaintiff claimed general and special damages for infringement of its industrial design, passing off and fraud, a permanent injunction restraining further infringement, declarations and costs.
Held: The Court found that the key features of the gumboots in issue were the Shaft (the long tube that covers the area from the ankle to the calf which makes the boot so recognizable as a distinctive type of footwear); the Collar (the top edge of the shaft, where one inserts the foot, which is rim-padded for extra strength and comfort); the Vamp (the part of the boot that covers the top of the foot); the Counter (the back lower part of the boot where the heel sits); and the Instep (the arch inside the boot that distinguishes the left from the right foot).
The Court found that none of these ornamental aspects of the design were defined exclusively by the technical function of the article. They had little or nothing to do with the functionality and usability of the product, but were exclusively aesthetic creations determining the external appearance of the product, clearly used to improve the product’s marketability by making it more attractive or appealing. Further, the Court found that there was considerable scope for the design of such grooves, their individual characteristics and their specific arrangement. The degree of freedom of the designer in designing such grooves was almost unlimited because such decoration can come in any combination of colors, patterns, and shapes. The defendant’s designer would have had sufficient freedom in choosing a design, reinforcing the conclusion that if the two designs do not have significant differences, they would produce the same overall impression on a consumer.
The Court examined the designs of the plaintiff and defendant side by side. It found that there was no difference between the designs, and that the defendant’s design was an obvious adaptation of the design of the plaintiff.
The Court therefore found that the defendant infringed the plaintiff’s industrial design in respect of the gumboots. Specifically, the Court found that the defendant had adopted the registered design of the plaintiff and applied it to its own products with a view to cash in on the reputation and goodwill enjoyed by the plaintiff and its products, amounting to confusion and passing off.
The Court issued a permanent injunction restraining the defendant, its servants, employees, agents or assignees from reproducing the plaintiff’s registered industrial design in the manufacture, importing, offering for sale and selling of gumboots, as well as from stocking gumboots of that design for the purposes of offering them for sale or selling them.
The Court also awarded a sum of Ush 5,500,000,000 as general damages and special damages of Ush 6,589,795,284, as well as interest.
Relevant holdings in relation to emerging issues in industrial designs:
1. Industrial design, as a category of intellectual property law, refers only to the aesthetic nature of a finished product, and is distinct from any technical or functional aspects. That is, it is intended to protect features of an industrial article that are aesthetic and are not merely functional aspects of the design.
2. The design must not, to the proprietor’s knowledge, have been in use by a person other than the applicant at the time that the design was adopted by the applicant. Where two or more persons have made the same industrial design independently of each other, the person whose application has the earliest filing date or, if priority is claimed, the earliest validly claimed priority date that leads to the registration of an industrial design, has the right to register the industrial design.
3. Infringement of an industrial design occurs when someone applies a registered industrial design or a design not differing substantially from the registered design, to an article for the purposes of sale, rental, or exposure for sale, without the permission of the owner.
Relevant legislation: