RULING HAVELLS INDIA LTD AND CATHERINE BONIFACE SHIO final

IN THE HIGH COURT OF THE UNITED REPUBLIC OF TANZANIA (COMMERCIAL DIVISION) AT DAR ES SALAAM COMMERCIAL CASE NO. 5329 OF 2024 BETWEEN HAVELLS INDIA LIMITED…………………………..………PLAINTIFF VERSUS CATHERINE BONIFACE SHIO………………………….... DEFENDANT DEFAULT JUDGMENT Date of Last Order: 20/09/2024 Date of Judgment: 18/10/2024 HON. GONZI, J. The Plaintiff sued the Defendant claiming against her for Judgment and Decree for Orders as follows: a) An order declaring that the Defendant's conduct amounts to passing-off and infringement. b) A permanent injunction restraining the Defendant, whether by its officers, servants, affiliates, partners or agents, or any of them, or otherwise from infringing the Plaintiff's Trade Mark HAVELLS; 1 c) A permanent injunction restraining the Defendant, whether by their officers, servants, affiliates, partners or agents, or any of them, or otherwise from importing, distributing, selling, dealing in any manner, or advertising for sale any Industrial & Domestic Circuit Protection Switchgear, Cables & Wires, Motors, Fans, Power Capacitors, Lamps, and Luminaires for Domestic, Commercial & Industrial applications, Modular Switches, Water Heaters & Domestic Appliances products in the Tanzanian market which are confusingly similar to the Plaintiff's products; d) An order for the destruction of the Plaintiff's Trade Marks on all boxes, packages, labels and display matter in respect of any Industrial & Domestic Circuit Protection Switchgear, Cables & Wires, Motors, Fans, Power Capacitors, Lamps, and Luminaires for Domestic, Commercial & Industrial applications, Modular Switches, Water Heaters & Domestic Appliances products which are confusingly similar to the Plaintiff's products and are in the Defendant's possession, custody and/or 2 control and any other goods that may still be held or owned by the Defendant. e) And an order for the Defendants to disclose his suppliers who are supplying him with the counterfeit goods bearing the Plaintiff's Trademark HAVELLS. f) General damages. g) h) Any other or further relief that the Court deems just and equitable to grant. The quintessence of the pleadings is that the Plaintiff is the manufacturer of unique and distinct electrical goods and power distribution equipment under its well-known Trade Mark “HAVELLS”. The products consist of distinctive Industrial and Domestic Circuit Protection Switchgear, Cables & Wires, Motors, Fans, Power Capacitors, Lamps and Luminaires for Domestic, Commercial and industrial applications. It also manufactures Modular Switches, Water Heaters & Domestic Appliances. It was alleged that recently, the Plaintiff’s officers discovered counterfeited HAVELLS products in the Tanzanian market which are an exact replica of the Plaintiff’s HAVELLS products, being distributed by the Defendant who is passing off the said Plaintiff’s products. 3 The Plaintiff asserted that the Defendant’s counterfeit products bear the work mark “HAVELLS”, whereby the image and colour combination surrounding the image, the writing scheme, font and explanations are a replica of the Plaintiff’s products. The Plaintiff averred that the defendant’s conduct of using the “HAVELLS” Trade Mark and replicating them, is mala- fides since they are misleading and causing confusion to the consumers in the market who believe that the products originate from the same manufacturer or that there is a connection in trade between the Plaintiff and the Defendant. It was further stated that the Plaintiff and its affiliated companies have been manufacturing in India and supplying into the Tanzanian market their varieties of products for over 17 years through its biggest authorized distributor namely Multicables Tanzania Limited. The products have been well promoted and advertised to the extent that the brand and products are well-known and enjoy an established and significant market share in Tanzania. It was alleged that the Plaintiff’s Trade Mark registration has at all material times been valid and subsisting on the Trade and Services Marks Register. As per the Court records, summons was served upon the defendant on 22nd March 2024. However, the Defendant failed to file her Written Statement of Defence (WSD). On 30/05/2024 when the case was called for First Pretrial Conference, Ms Miriam Mosses, Learned Advocate, appeared for the Plaintiff. The Defendant was represented by Mr. Pascal 4 Bitegela, Learned Advocate, who prayed for an extension of time to file WSD beyond the 28 days prescribed period. His application was not granted and the case proceeded without the Defendant’s involvement. The Plaintiff applied for default Judgment under Rule 22 of the Commercial Court Rules. In proving the claim, the plaintiff filed in Court, Form No.1 accompanied with a joint affidavit of Harsh Aggarwal, Senior General Manager and Roma Arora, the General Manager of the Plaintiff Company. The Plaintiff attached EXHIBIT HIL-1 which is a copy of comparison of products proving that the Plaintiff’s officers discovered counterfeited HAVELLS products from the Defendant in the Tanzanian market, which are a replica of the Plaintiff’s HAVELLS products. EXHIBIT HIL-2 consists of copies of certificates of registration and records of assignment proving that the Plaintiff is the registered proprietor of the word “HAVELLS” as a Trade Mark in Tanzania (mainland). Before delving into the determination of the present suit, the prevailing legal environments which influence its determination need to be exposed. One of the cardinal principles of law relating affidavits is that an affidavit is a substitute for oral evidence as elucidated in the case of Uganda v. Commissioner of Prisons, Ex parte Matovu (1966) E.A.514 at page 520. The principle in that case was accepted by the Court of Appeal of Tanzania in the case of PHANTOM MODERN TRANSPORT (1985) LTD and D.T. DOBIE (TANZANIA) LTD and in several other cases. In 5 Uganda vs commissioner of Prisons, Exparte Matovu case (supra), the rule on the making and use of affidavits for use in Court was stated that: “… as a general rule of practice and procedure, an affidavit, for use in Court, being a substitute for oral evidence, should only contain statements of facts to which the witness disposes either of his own personal knowledge or from information he believes to be true.” (underlining supplied) It is plain, therefore, that an affidavit for use in Court is a substitute for oral evidence. Additionally, it is the principle that a party does not deny the averments in pleadings of the other side, he is deemed to have admitted the same. Further, where a party does not file a counter affidavit to dispute the contents of an Affidavit, he is deemed to have admitted the statements in the Affidavit of the adverse party. This can be extracted from the decision in Fatuma Ally Mohamed vs Mohamed Salehe [2020] TZHCLand 2320 (TANZLII) at page 2. I quote: “The position of the law on failure to file a counter affidavit it is settled. The Respondent is deemed to have not contested on the factuality of the affidavit. I agree with Mr. Njama that, omission to file a counter affidavit does not render the application uncontested as to deny the respondent a right to address the Courton merit or otherwise of the application. Neither does it release the applicant with a duty to argue his case. This position was 6 clearly stated in among other, in Finn vin Wurden Perterson and Another Vs. Arusha District Council, Civil Application No.562/17 of 2017.” (Underlining supplied) The suit is premised on allegations of infringement of Plaintiff’s trademark and or the tort of passing off by the Defendant. According to section 2 of the Trade and Services Mark Act CAP 326 R.E 2002, a trade or service mark means “Any visible sign used or proposed to be used upon, in connection with or in relation to goods or services for the purpose of distinguishing in the course of trade or business the goods or services of a person from those of another.” For one to successfully sue for the tort of passing off, the necessary elements to establish were elucidated in the case of Reckitt & Colman Products Ltd. V Borden Inc. [1990] I WLR 491, famously known as the Jif Lemon Case. Three essential elements were enumerated that: 1) The goods or services have acquired goodwill or reputation in the market place that distinguishes such goods or services from competitors; 2) The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and 7 3) The claimant may suffer damages because of the misrepresentation. Passing off is a cause of action mostly used for unregistered Trademarks whilst Trademarks infringement on the other hand requires registration. Once there is a valid registration, the proprietor is regarded as having exclusive right over the trade and service mark. Section 31 of the Trade and Service Marks Act states that: “Subject to the provision of this Act and limitations or conditions entered in the register, the registration of a trade or service mark shall, if valid, give or be deemed to have given to the registered proprietor the exclusive right to the use of a trade or service mark in relation to any goods including sale, importation and offer for sale or importation.” In addition, the law provided for what amounts to infringement of a trademark under Section 32 of the Act thus: “(1) The exclusive right referred to in section 31 shall be deemed to be infringed by any person who, not being the proprietor of a trade mark or its registered user using by way of the permitted use, uses a sign either- (a) Identical with or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade or business, in relation to any closely related goods and in such manner as to render the use of the sign likely to be either- 8 (i) As being used as a trade mark or business or company name; or (ii) In a case in which the use is upon the goods or in physical relation to them or in relation to services or in advertising (b) identical with or nearly resembling it in the course of trade or business in any manner likely to impair the distinctive character or acquired reputation of the trade mark For there to be a Trademark infringement, the Mark should be registered, the products should be identical in a way they can cause confusion to the customers and identical in the course of trade in a manner likely to impair distinctive character or acquired reputation. In the case at hand, undoubtedly the Plaintiff’s “Havells” Trademark is registered as per EXHIBIT HIL-2. The plaintiff’s products are identical with the defendant’s as per Exhibit HIL-1 whereby the image and colour combination surrounding the image, the writing scheme, font and explanations are a replica of the Plaintiff’s products. Further, the products are of the same nature they are both electrical goods and power equipment hence very confusingly similar. As the Defendant’s counterfeit goods are similar to the Plaintiffs’ genuine goods, flooding them into the same market confuses the clients and affects the reputation of the Plaintiff’s products since they are similar. An infringement occurs. 9 Having carefully gone through the affidavit of proof of the claim and exhibits HIL 1 and HIL 2 which were tendered by the Plaintiff in this suit, I find that the conduct of the Defendant in supplying counterfeit “Havells” products amounts to infringement of the Plaintiff’s trademarks. It affects the plaintiff’s genuine products in business circulation in the Tanzanian market. The infringement tarnishes or is likely to tarnish the Plaintiff’s reputation in the Tanzanian market hence unlawful, improper and damages or injures the Plaintiff. Relying on the pleadings, documents relied upon by the plaintiff and the affidavit for proof of the claim, I hold that the conditions for granting default judgment are in existence and for the foregoing reasons, I enter Judgment and Decree in favor of the Plaintiff against the Defendant as prayed and proceed to make the following orders: a. It is hereby declared that the Defendant's conduct amounts to infringement of the Plaintiff’s trademark. b. A permanent injunction is hereby imposed restraining the Defendant, whether by officers, servants, affiliates, partners or agents, or any of them, or otherwise from importing, distributing, selling, dealing in any manner, or advertising for sale any Industrial & Domestic Circuit Protection Switchgear, Cables & Wires, Motors, Fans, Power 10 Capacitors, Lamps, and Luminaires for Domestic, Commercial & Industrial applications, Modular Switches, Water Heaters & Domestic Appliances products in the Tanzanian market which are confusingly similar to the Plaintiff's “HAVELLS” products; c. An order is hereby imposed for destruction of the Defendant’s goods bearing the Plaintiff’s Trade Mark “HAVELLS” in all boxes, packages, labels and display matter in respect of any Industrial & Domestic Circuit Protection Switchgear, Cables & Wires, Motors, Fans, Power Capacitors, Lamps, and Luminaires for Domestic, Commercial & Industrial applications, Modular Switches, Water Heaters & Domestic Appliances products which are confusingly similar to the Plaintiff's products which are in the Defendant's possession, custody and/or control and any other goods that may still be held or owned by the Defendant. d. It is hereby ordered the defendant shall pay the plaintiff general damages of TZS. 20,000,000/= 11 e. Further, the Plaintiff is ordered to ensure that execution of the decree emanating from this suit is done in compliance with the requirements of Rule 22 (2) (a) and (b) High Court (Commercial Division) Procedure Rules, 2012 (as amended, 2019). It is so ordered. A. H. GONZI JUDGE 18/10/2024 Judgment is delivered in Court this 18th day of October, 2024 in the presence of Ms. Haika Mrango and Miriam Moses, Advocates for the Plaintiff and Mr. Pascal Bitegela, Advocate for the Defendant. A. H. GONZI JUDGE 18/10/2024 12