Cpc Internation Inc vs Zainab Grain Millers Ltd Civil Appeal No 49 of 1995 1996 TZCA 66 15 April 1996

IN THE COURT OF APPl AL OP TANZANIA i AT OAR ES S/ l a a m •iCO RAM? MNZAVAS, J. A. , MPfiLIbA, J .A., And LUBU7A, J.A.) CIVIL APPEAL NO. 49 OF 1995 BETWEEN CPC international INC. ............. APPELLANT AND ZAINAB GRAIN MILLERS LTD. . . . . . RESPONDENT <App«al front tba dec: sion of the- .High Court of Taneania at v: Dar os Salaam) (MWal)caa'.i J») doted the **«y o ■ August, 1934 in Cjyil Case No. 12 . of 1993 JUDGMENT OF.THE - OURT LUBOV A ^ - A * i Thi®. is $n appeal fic<m an im .erlocutovy ordet of the HighS'M CmiSX- J»>. The matter irose at th« cwMM»ttc«8ient of the trial of the suit in Civil Cas* No, 121 of 1993. In that Casar the appellant filed a suit a jains t the respondent^ 2ainab Grain Millers Ltd. The appellant ./as the proprietor of a trade mark "MAZOLA" which was registered in Patt A, Class 29 (Schedule III) under the Trade Marks Ordinal :e Cap. 354 of the Laws. Its registration number was 14645 dates 2.8.1971- which was last renewed with effect from 2,8*1992., Under the registered trade mark "MAZOLA" th4 appellant* s contf. jny has for a number of years been raarlteting and selling in Tanzania edible corn oil extracted';^ fwrc. snaise In plastic cortt 1 **<-rs c >d bottles bearing a distinctive ye.l.low and green device with the w..>rd • ••*/2 2 It was the hppellant's case that ;6metiir»e since 1992* the respondent infringed the appellant's registered trade mark by manufacturing and marketing for salo to che public in Tanzania maize meal for human consumption under t ie trade mark "MAZOLA". That apart from using the trade mark "MA iOLA11, the respondent v a s als-o using on its.packets o f malxa m .-al a device of a maize £ O b which was a colourable and deceptive immitation of the well known device of the appellant. It was t./s appellant's further claim that the infringement and pasning-<.ff caused damage and irreparable loss tP the reputation o -ho appellant* s trade nark which, unless restrained-would caus> further loss and damage to th« appellants Among the relit-Js souqht by the appellant was an injunction to rostrntn t ie respondent from . ^ u B i t k i n a ; and .marketing its maize me jl narked "MAZOLA" or V procuring to be sold or passing-off maize meal or any other preduct not of the appellant’s manufacture a merchandize in packaging bearing a device which by reason of colourable yesamblahca to the appellant* s device dec*, ived the public an<j tha customers in particular. At the commencement of the trial, Mi . Uzanda, learned Counsel for the appellant (plaintiff) file i a Chamber Summons seeking inter alia* the following orderst- 1«. An injunction to restrain :ne Defendant, by its officers servants or agents or any tf them, er otherwise from ini ringi~ ng the plaintiff's Registered .iTrade '.Mark .''MAZOLA'' Number 14645 b y cea sin g forth w ith from produci­ ng, making or manufacturing maize meal or any other product marked "MAZOLA". ..../3 3 2* An injunction to restrain the Defendant, by its officers, servants or agents or any of them, or otherwise from selling " or offering or exposing or advertising for sale of procuring to be sold or passing off its maize meal marked "MAZOLA". 3. Deliver up by the Defendant to an office of this Honourable Court all packets, boxes, cartons or other containers, labels or advertising material bearing the mark or word "MAZOLA" and or any representation, ' device or get up similar to r . f the plaintiff. The grounds in support of the application for temporary itr^mction were ■ infringem^rit and passing off by the respondent/ defendant company which was represented by Mr. Kisusi, learned Counsel. In a forty (40) page ruling, the application for an interlocutory injunction was dismissed. Dismissing the applicationt the trial Court held that an Interlocutory injunction on the basis of infringement failed because, the goods in respect of which the trade mark complained of are different from those for which the applicant's (appellant) trade mark was registered. On the basis of passing-off it was also held that this was not an appropriate case in which to grant a temporary injunction. Dissatisfied with the ruling, the appellant has, with leave of the High Court appealed to this Court. Aa before, the appellant is represented by Mr. Uganda and Mr. Kisusi appeared for the respondent. In the memorandum of appeal four grounds of appeal have been raised. .From these, we think the following . 4 two Issues are crucial £or the determination of this appeal* First, that the learned Judge erred in determining the application for a temporary injunction by deciding issues which should have been resolved and determined at the trial of the main suit. 4<$c»nd| that the l^a^nad Judge misdirected himself on the principles relating to the grant of temporary injunction. TO start with, Mr. Uzanda, learned Counsel stated that the c b ject of a temporary Injunction is to maintain the ptatus quo until the rights of the parties are finally determined at the trial* In this case Mr. Uzanda submitted, a temporary injunction v a c is©ught In ordeif to restrain th* respondent from infringing the appellant's (applicant) registered tea'1? mark - H.M/i20LAw f until the trial of the case w as co^pl^ted. At (-hot stage Mr, Uzanda urged, it was- not the proper stage for the learned judge to «=oiisJUJ«o» at&d dtscide 1b cue a which were to be resolved at the trial of the main suit, ror instonco, Mr. Uzanda stated, the central is sue for detejeminetion at the trial was whether the respondent* is device wa* a colourable and deceptive immitntion of the appellant*s (plaintiff) trade mark "Mazola". On this, Mr. Uzanda further submittedt the learned Judge addressed at great length and finally decided that there was no infringement of the appellant*s ; ' c. ''.'■ trade mark because the goods for which the appellant1# trade w «rk "Mazola"' was registered were different from those in respect of which the tirade mark was complained of. Having decided that} Hr. Uzanda contended, there were no further-issues for determination at the trial of tho main suit. In other w o r d s f Mr. Uzanda stressed, the learned Judge, fell into the error of trying issue* which were due for trial ;at a later'stage of the main' suit at. the tima when he was dealing with an application • • •*/5 for an interlocutory Injuretion. This, he stated, was not a proper approach to applications such as this. With this,approach Mr. Uzanda charged, the learned judge closely examined and made findings on the issues of passing-off, infringement and the nature Of goods mi .which no evidence had been led as yet at that stage. The issue before us is whether it was proper for the learned Judge to deal and determine at the stage of hearing proceedings for an interim injunction the issues which were due for trial at the hearing of the main suito Mr. Kisdsi, learned Counsel for the respondent was of the strong view that the learned judge properly took into account all the relevant facts /• «<: that stage and came to the correct conclusion in dismissing the .mplication f«c a t«mpoi:v>ry injunction, v.'lth respect, we ore unable to accept Mr. Kisusi's submission on this point. From the lengthy and well researched ruling, it is apparent to us that the learned judge went far beyond the scope necessary for the determination of an application for an interim injunction pending the final determinetion of the main suit. As correctly Stated by Mr« Uzanda, it is elementary that thg purpose of an interlocutory injunction is to maintain the status quo until the main suit is finally determined* That is, until the time when the issues involved are finally resolved. In that case, in dealing with the proceedings for an interlocutory injunction the learned judge embarked on resolving issues which were appropriately due for trial of the main suit later when evidence would be led on same. In doing «o, that In our view, amounted to the learned judge .trying the main suit, at a stage which had not been reached* That is, with the triable issues in the main suit decided and resolved at that stage, it rendered the subsequent trial of the main s u i t , superflous. In our considered opinion, the Court having decided the crucial and disputed issues on the infringement of the appellant* s registered trade mark "MAZOLA" ard passing off , ther. there were no further material issues to be tried in the main suit* And that was the core base of Mr* Uzanda's complaint in this matter which, we accept is well founded. The various cases eited in the ruling which the learned Judge has endeavoured to distinguish with commendable and unexcelled ability are to our minds, a clear testimony of the various factors which the learned judga took into account in considering the application for a temporary injunction. It is common knowledge that some of these factors such as the nature, class of goods and how they are marketed are not at all relevant for the granting or otherwise of a temporary injunction or the bn sis of passing-off. In the instant case, the learned juHge went into considerable length, examining the nature and class of goods in deciding on the issue of passing off. With respect, we agree with Mr. Uzanda, that this was not relevant for purposes of determining the application for a temporary injunction. The next important issue raised in this matter concerns th« merits of the temporary injunction sought. It was Mr. tf2anda*s submission that the learned judge erred in applying wrong principles pertaining temoorary injunction. For instance, Hr. Ifeanda claimed, throughout the ruling, the learned judge persistently referred!to the appellant/applicant as having failed; 7 to prove infringement or passing-off on which basis it was subsequently held that temporary injunction could not bo granted. This, he stated, was a misdirection in law because the refusal to grant temporary injunction was based on wrong principles* so, the q uestion.before us is whether the temporary injunction was properly refused. To this Mr. Kisusi, learned Counsel for the respondent insisted that it was properly rejected. Later, however, at the prompting of the Court, he conceded and rightly so in our view, that the learned Judge had overstretched himself on this aspect and as a result, matters that were not relevant in deciding the application for temporary injunction wore taken into account. It hardly needs to be overemphasized that in all cases involving the granting of temporary injunction the applicable principles are the same. In the case of GIBLLA V CASSM/yN BROWN & CO., LTD. ^1973/ E.A. 359 the Court of Appeal For East Africa set 0 '.>t the applicable conditions in cloar term?.) ?/These are. that J^--\ ^ t h e applicant must show a prima facie case with a probability of success and that the applicart might otherv/f so suffer irreparable loss which would not adequately be compensated by nn award of damages. In the lighc of these principles we think that in the instant case what was expected of the learned juHgr; is to consider whether on the facts as disclosed from the affidavits and the pleadings, a prima facie casr hed been shown. It would, in our view, be premature for the court to require the appellant/applicant to prove infringament or passing off at that stage as no evidence h?sd been adduced. This, it would appear is what the learned judge did in this matter where, in refusing to grant a temporary injunction it was held that the applicant had failed to prove either infringement or passing cff. This, we are satisfied wa# .» «t/8‘ R a misdirection on the part of the learned Judge. It is settled principle that in matters of passing off, a prima facie case could well be shown if upon consideration of the close similarity between the trade marks complained of was, on balance such as to cause deception or confusion on the part of the customers. In this regard it is apparent to us that the learned judge refused to grant the temporary injunction on the basis of conditions which were inapplicable to the case at that stage. For that reason, and as stated in the case of Glella V Cassman Brown Co. L t d . (Supra) though the grant of an injunction is the court's discretion which is not normally interfered with by the Court of Appeal unless it' has not been exercised judicially, in the circumstances of the case it is our view that the temporary injunction was not properly refused. Other grounds were also raised in this appeal. They relate to the law on infringement of trade marks and passing-off as well as the fact that issues which were not raised in the plaint ■were considered and decided. As it is our view that the two grounds which we have endeavoured to dealt with are sufficient to dispose of this matter, we deem it unnecessary to embark on them. For the foregoing rensons, the appeal Is nllowed and the ruling of the High Court dated the 30 August, 1994 is set aside. An orr’-r for temporary injunction pending the final determination of the main suit is granted. It is further ordered that the main suit be heard on merits before another Judge. Costs to be costs in the cause. . . . »/9 9 DATED AT DAR ES SALAAM THIS 15TH DAY OP APRIL, 1996. ..N. S. MNZAVAS JUSTICE OF APPEAL LiM. mfalila JUSTICE OP APPEAL D.Z. LUBUVA JUSTICE OF APPEAL I certify that this is a true copy of the original. I 'i ( B.M. LUANDA'") SENIOR DEPU^"REGISTRAR