KIWI EUROPEAN HOLDINGS BV v. SAJAD ALl LIMITED [2005] TLR 434

Facts

The Plaintiff was the registered proprietor in Tanzania of the trade mark "KIWI". One day, a Product Development Representative of the plaintiff whose functionsincluded monitoring "KIWI" shoe product and monitoring, counterfeit products in the market, bought from the defendant's shop a KIWI shoe polish which turned out not to be a true "KIWI" product although it had many features of one, including the logo on it, but the year of its manufacture was missing and the motto on it was slightly different from the true KIWI's. The Plaintiff then sued the defendant for infringement of the plaintiff's registered trade mark and calculated to cause confusion and passing off. The defendant admitted that they had been importing "KIWI" products from Dubai since 2001 but denied that the KIWI bought from their shop was part of those goods.

Held: (i) In general, proof of a single act of infringement by the defendant is sufficient

I to justify the plaintiff in bringing his action.

(ii) The cumulative effect of sections 31 and 32(1)(a) of the Trade and Service Marks Act 1986 is that the right to exclusive use upon registration of a trade mark cannot be infringed unless it is proved that the offending mark is either identical with the registered trade mark or it so resembles the registered trade mark as to be likely to deceive or cause confusion in relation to the goods in respect of which the mark is registered.

(iii) The burden of satisfying the court that there has been an infringement of trade mark is on the party who alleges the infringement; it is for him to pursue that there is a resemblance between the two marks and that such resemblance is deceptive.

(iv) It isthe duty of the judge to decide whether the trade mark complained of so resembles the registered mark as to be likely to deceive or cause confusion in the minds of the public.

(v) In deciding the question of similarity between two marks, one has to approach it from the point of view of a man of average intelligence and of imperfect recollection, and that an ordinary purchaser is not gifted with immense powers of observation.

(vi) The use of the plaintiff's logo on the product bought from the defendant's shop that was likely to deceive or cause confusion in the trade.