República Unida de Tanzanía

Sabuni Detergents Limited v Murzah Oil Mills Limited, Commercial Case No. 256 of 2001, High Court of Tanzania, Commercial Division at Dar es Salaam

Bwana, J

Date of Judgment: May 8, 2002

Facts

The plaintiff, the registered owner of the "Foma Limao" trade mark for a soap, began producing a soap with that mark in June 2000. In 2001, the defendant introduced a new soap bearing the trade mark "Takasa Limao" to the market. The soap had slices of lemon and drops on the packages similar to those in the "Foma Limoa" soap. The plaintiff claimed that the defendant infringed its trade mark "Foma Limao" by passing off its product. The plaintiff requested a perpetual injunction, the delivery or destruction of all the defendant's products and packages bearing the "TAKASA LIMAO" mark, and special and general damages.

Holding

Section 30 of the Trade and Service Mark Act, 1986, clearly states that no person can institute proceedings to prevent or recover damages for the infringement of an unregistered trade mark or service mark, but a person passing off the goods or services of another may be sued.

Decision

The trade marks "FOMA LIMAO" and "TAKASA LIMAO" are so similar that they are likely to deceive or cause confusion, and its product has similar or resembling packages, thus confusing consumers and making them believe that "TAKASA LIMAO" is the same as "FOMA LIMAO." By selling "TAKASA LIMAO," the defendant was passing off and did infringe the plaintiff trade mark "FOMA LIMAO." The court granted a perpetual injunction on the defendant (whether acting by its directors, officers, staff, agents or any one of them) from passing off and/or infringing the trade mark "FOMA LIMAO." The defendant was further ordered to destroy all products and packages bearing "TAKASA LIMAO." Any further use of the "TAKASA LIMAO" mark would be a breach of the above-imposed perpetual injunction and the defendant would then be required to pay general damages.