(Ruling) Succession - summons for revocation and or annulment of the grant - whether grant was obtained fraudlently by making false statements,concealment from the court of material facts

Unilever Plc v Bidco Oil Industries

High Court, at Nairobi February 4, 2004

Onyango-Otieno J

Civil Case No 1447 of 1999

Trademark – intellectual property - similarity in the get-up and words used on rival products in the course of trade – how the court will assess the degree of similarity and the likelihood of confusion – party on whom the burden of proof lies – plaintiff the proprietor of a trademark “Blue Band” for its margarine – defendant selling its margarine under the names “Gold Band” – whether defendant liable for passing off and for infringement of the plaintiff’s trademark.

The plaintiff was a manufacturer of a margarine brand known as “Blue Band” for which it held a registered trademark for over fifty years. It filed this suit claiming that the defendant had since 1999 infringed on the trademark by using in the course of trade in Kenya and in relation to its own brand of margarine the name “Gold Band” and the device of a band on the packaging bearing the product.

The plaintiff alleged that the defendant’s use of the words “Gold Band” on its containers infringed on its trademark in that the word “Band” had been used by the plaintiff for over fifty years so that the public had come to associate it with the plaintiff’s goods and that the plaintiff had acquired a substantial goodwill in the name and the device. It added that “Band” was a fancy word not necessarily descriptive of margarine so that the defendant had created confusion in the trade by using it.

The defendant, on the other hand, alleged that the get-up on its containers was different and the words “Bidco Gold Band” used on them were not the same as the plaintiff’s and that in any case, there could be no property in a colour or a name. It maintained that there was no confusion caused or likely to be caused by either the get-up or the words on its product.

Held:

1. The plaintiff was the registered proprietor of the trade mark “Blue Band” and the registration gave it the exclusive right to use the trade mark in relation to margarine and anybody else who used a mark identical with or so nearly resembling that mark as to be likely to deceive or cause confusion in the course of trade in margarine would be stopped by law from doing so.

2. The get-up of the defendant’s Gold Band margarine containers was not confusing as the colours and names were clearly different from those used on the plaintiff’s Blue Band margarine. The defendant could therefore not be found liable for the tort of passing off.

3. As a general rule, the burden of satisfying the Court that there has been an infringement of a trademark is on the plaintiff on whose duty it is to prove that there is a resemblance between the two marks, and that such resemblance is deceptive. It is the duty of the Court to determine whether such a resemblance of a registered trademark exists as to be likely to deceive or cause confusion.

4. The trademark complained of need not be absolutely identical with the other one. The degree of resemblance necessary is not capable of definition a priori and all that a court can do is say that no trader can adopt a trademark so resembling that of a rival so that ordinary purchasers purchasing with ordinary caution are likely to be misled.

5. The trademark which was registered in the plaintiff’s name was “Blue Band” and not “Band”. Since it was a combination of the words “Blue Band” which was a trademark, there could be no property in the word “Band” capable of being protected.

6. There was no satisfactory proof that the words “Gold Band” or “Bidco Gold Band” so nearly resembled the plaintiff’s registered trademark as to be likely to deceive or cause confusion in the minds of the public.

Plaintiff’s suit dismissed with costs.

Cases

1. Aktiebolaget Jonkoping - Vulcan Indstricksfabriksaktiebolag v East Africa Match Co Ltd [1964] EA 62

2. Coca-Cola Company of Canada Limited v Pepsi-Cola Company of Canada Limited [1942] 1 All ER 615; [1942] 2 WWR 257

3. Parke Davies & Co Ltd v Opa Pharmacy Ltd [1961] EA 556

Statutes

Trade Marks Act (cap 506) section 7

Advocates

Mr Ochieng for the Plaintiff

Mr Billing for the Defendant

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