20051015 TZHC Dar es Salaam

IN THE HIGH COURT OF TANZP.i_'-i!A (COMMERCIAL DIVISION) AT DAR Es··s,A.LAt\M MJSCELAN'Eous·cIvIL CAUSE NO. 7 OF 2CGL . . ' IN THE lv1A TT-ER OF THE TRADE AND SERVICE MARKS AC~ .'·/:~- · ~- :,.:: · ;~: AND BE:TNEEN 1 . • I· i 'fr VERSUS • .,. ,• BU8,Ui'}.~i :f.08/\CCO COMPANY U1)!_TED .. ' '. . AND' • • I O •, ,; . •. •.1.-. ~ 1 . ' . . • . •. •. .MAST:::RMIND TOBACCO (TANZANIA) Lli'v1HED ... INTEREST==·•:: ..:::::_-·., . . 'f ;,,I G R ULlr'-.i 1 ~ : ,,,. ~· f\lMARO,J'. ' . The i.anzanic ?' . ~Cigarette Comp2ny . Lirnit.ed has .f!,::c . ar1 2::::..::2::::-. ·'.:-~ :0·,:': · Rect .,fica· t:,or11, OLI th'·e· .F)eg,··ste·r \ ' ~ i..Jn<-ler: ,\.J C:oc+:,__ ,_ 1~ -r,,; . '-'~ c.~1:::: ,,_,._1 C1!1_; ,.;U . 0:.1 ,\ilt; ___ ..,.•;,:::·_::::: ,c ___ ,. _ ___'..•: ,.:-:::,;,._.·; ' ....-· . . . . rks Ac' No '1') 'of 198,.,o ~nd ~ 1s0 ,•-i-c C'c,,_;:n- 2 ";', ,,..s ,:...,.... Ma ' ~ C:: !, .!.. / v: : : :;:; ,.:·,...r• r<' ·•-- . , L Cl 1 \J, , ._;:;, ._; .... ..:, U -· 1 I , v - • ·~..:: : - : :: .:: : -· ·. . . . ApplicatiOr! of. La~✓S .Ordinance; Cao.. 453. Tr-:2 2ooii-:ant is 2si-':inc fc:· ::- ·s.--.c· . ~ ;·) / . • ' . • j. • ,_, " • mark from the RegistEi~. The Application has been filed· by Marando, Mnyele . and yo. Advocates and . . it is against Burundi Tobacco Company Limited. Master.mind Tobacco (Tanzania) Ltd has joined the. proceedings as an ~nterested ·Party. The Respondent and the Interested Party are represented by M~ono & Co. Advocates. A notice of preliminary objection filed by_ the Respondent and the Interested Party raises a number of preliminary objections: "i) The applicatio_n is incompetent because it has been instituted whhour the authority of tile Applicant company. ii) The _Applic~tion is incompet~nt because the Couns.el for the Applicant is r,ot dully. authorized to institute the application on behalf of' the Applicant Company. iii)· The-purported application- is incompf;tent because it is not supported . -by any affidavit. In the alternative, the application is incompe'tent be~ause it is supported by an affidavit which is bad in law for being a legal discourse. iv) The application is misconceived and/or o(herwise incompetent because the same has been overtaken byevents. \: V,' v) · The application is misconceived anplor otherwise incompetent and is · improperly befor~ the Hqn. Court because both the "appiicatic-r/ and - the statement of _the case purportedly flied in support cf the cham::·er summons have· no leg~! basis. vi) · The application is an abuse of the court process and has been riled in bad faith because it con9eals_ material facts relating to the subject matter of this· application, which are substantially the same as the rri'att~r involved in MISC. COMMERCIAL CASE NO. 19 OF 2002. '1 I Arguments in respect of the preliminary objections were advan~ed by way of ._ . ,ritten submissions. Before embarking 011 the an?lysis of the arguments to de:ermine ths iT:srit of the objection, let me say that the recent decision of the Court of Appeal in Citibank ·_· - -- ·- · Tanzania ,.;...---- . Ltd· V .TTCL & Other~ ,- - _______ ______ Civil Application No.63 . .:- of 2003 sets impo,iant .. -----. ';·,·- :_. ... guidelines within which preliminary objections should be examined. In the said case, Hon. Justice Nsekela, JA quoted ·with approval the case of ~~~!~~ __ai_scuits \. Manufact~~.,__Ltd Vs West End Distributors Ltd (1966} eE! 696 at page~_ 700 ·and 701 . .F.or a _preliminary objection to be competently considered as prelimin2ry (- ·(,--l-.:ection it must satisfy the following conditions: 1 -" i) The points of law must either be pleaded or rn1,1st arise as a clear implication from the pleadings. ii) They must- be pure points of law which do not require close examination or scrutiny of documents. 4 . Determination of points of law in issue must not depend on the - iii) discretion of the court. The decision binds this court. The.preliminary objections raised therefore. v11:! be examined in. the light of the decision of the ·Court of .Appeal cited 2bov2. The submission made by the Counsel for the Respondent 2nd the Interested Party in- respect of the first point of objectior:i is that the Applicant company being a creature of a statute only functions through natural persons. The natural persons who can legally carry on any act in the name of the Applicant company, inclL'ding institution of proceedings are the Directors. The only way which can prove _tc :fl;__ _ -- court that such authorization._was given is an extract of the resolution authoriz.ing L'~§ commencement of the proceedings. This -must come from the minute book which i$ required to be kept by every company under Article 67 of Table 1 of ihe F;(si Schedule of the Companies Ordinance Cap 212 read together with Section 12c: -:;i the Ordinance (Companies Ordinance). The court was referrec w thE c2sss ::/ Bugerere Coffee Growers Ltd Vs Debaduka & Another (1970) E.P. 1117, Kiwanuka & Co Vs Walug·embe (1969) EA 660 and two unreported c2sss decided by myself; E.R. Investment Ltd Vs The Tanzania Development Finance Co. Ltd & Another civil case No~66. of 19S9· and International Mining & Prospecting {Tanzani~) Ltd V Cornelil:JS Finely & Two Others C!vil Case No.35 of 2001. In ail --· the cases· the suit was dismissed for ~9ving been filed without the authority of ths --- company. The court was requested to follow those authorities and upho1d this poir,: ... ---- of objection and dismiss the application. . Counsel for the applicant vehemently opposed the objection~. Hs submitt2d that Advocates appear in court on behaif of their clients by virtue of Orde: l!, i"uis ': of .t .- .·• r~ tris Civil Procedure :Gode 1966- without attaching resolutions or authority of such 1;,"> . :. ,tt, ~, ['. company. He ~aid the _due authorization betvveen an Advocate and the company is contractual· between themselves and third parties shoul_d have no room to poke their noses into that relationship. The Counsel admitted that there are occasions when authorization may become an issue and this normally occur in situations of disputes arising within the company itself where certain members or directors dispute the authority of some other members or Directors to authorize advocates to institute proceeding on behalf 11 ' - ' ·- --- of the company. The Counsel is of an opiniQD__ that where one Counsel doubt~---~~e, . ' authority of another Counsel to institute .proceedings in the name of the conJ_pany, the proper course is to file an application under Order Ill rule 4 urging the court to require the COUf1Sel to ·prove that he/she has been dully authc,rized to institute the proceedings in the name of the company. Alternative, resort should be made to the . . . --- process of discovery under Order XI of the Civil Procedure Code 1966. The Counsel ----- said neither the ·civil Procedure Code 1966, nor the Trade and Service Mark Regulations Act require a r~solution of a company appointing a Counsel be filed together with the proceeding~ The Counsel said proof of authority is a matter of ....... . . --- evidence and_!b_~r.~fQJ~_t.be=°1?J.e.ctioo-is misc9.Qcejy~d..'. The Counsel distinguished the ~--·-· - ~- - cases of Bugerere (supra) and Sebad.uka (supra) with this C8se. As for the case of Bugerere he said it was a case which arose out of an ·internal confiict and wher:i the counsel instituted the proceedings the issue of his ~4~ority to sue on behalf of the· company arose. As for the case of Sibaduka, it was submitted that the Counsel was instructed by a. person who had .been disowned by the Company and the issue of authority arose in those· circumstance. 6 He submitted ·furth~r that in this case the Applicant has net disputed .instructing him to file the application _on behalf of the Applicant compsny. Rsgarding the two unreported-cases which·_! deter-mined, the Counsel said they were decided in total disregard ·of the provisions of Order I.II rule 4 and Order XI. He relied_ on an English decision in the Case Russian Commercial and Industrial Bank vs Comptour .D'Escompte de Mulhouse·(1928) 2 KB at page 671-2 where Lord-Atkin made an observation that the question of the authority to sue is not open to the defendant to raise it as a matter of defence. Those were submissions macie for ihe first point of objection . .l( The question I ask is whether the question of the authority of the Counsel for the Applicant Company to sue on behalf of the company has been propsriy raised as a preliminary objection. Gqing- back to the case of Citibank Tanzcnia limited (supra), for a matter to qu?lify to be raised ·as a prelim.inary objection, it must consi::; of pure points of law (Mukisa Biscuit's Case (supra) ·refers. This court cann01 determine this point without asking how would this court know whether the authority has been given. The answer to the question entails examination of whst has been filed together with the pleadings which show that the Counsel has the authority to institute the proceedings. Once th~Q_u_rj _X~~lU.!es _9.D_Jb? .~x~m.inction of the documents filed,· it is seeking for evidence. In terms of the decision of Mukisa Biscuit ·such point seizes to qualify as a preliminary objection ones the court searches for evidence. The objection on the authority of the Advocate for the . Applicant to su_e is dismissed. I totally agree with the Counsel for the Applicant that the point raised requires evidential facts. I concede that my two previous unreporied cases· relied upon by the Counsel for the Respondent wer.e decided without putting into· consideration the provisions of Order Ill rule 4 and Order XI of the Civ:! Procedure Code, 1966.~ 7 On the second point of objection, Counsel for the Respondent anci ths Interested Party submitted that it has two limbs. The first one is that the Counsel fer the Applicant is not dully authorized to institute the proceedings. VVhat hos beer, appended to the proceedings which is Annexture H are letters writ1en jy ane Vin12- Mbiro who cannot be said to be the Board. of Directors who can au'.nc,:ze i1stilulic: of these proceedings on behalf of the Company. Even the instructions given ir, the letters do not refer to these proceedings but to proceedings conducted in 2003. The ,. court was again referred to the case of Bugerere (supra). On the second limb, the Counsel for the Respondent and the Interested P.:::Ty submitted that the Counsel for the Applicant has not filed the prescribed Tradem2rt Form No. (TMI), from the Applicant Company. This is a form of authorization of ags:-:: which had to be filled by the Applicant as ~vidence that the Counsel for the ,t.,pp!ica,1 is dully authorized to act on in its behalf in these or proceedings brought under the provisions of the Trade and Service Mark Act 1986. The Couns.el went on io submit that the Applicant's Counsel ought to satisfy all the requirements of the ,6-ci befor-2 bringing these proceedings. :The court was referred to Rule fl of the T:-ade and - Service Marks RegulaUons 2000(G.N. 40 of 2000), which requires an agent - appointed either to commence or defend any proceedings under the Act either before the court or the Registrar to file a prescribed Trademark Form I (Form TM No. 1). According to the Counsel, Form TM No.1 was nof filed as required by the law, and so the application is incompetent and must collapse. The response by the Counsel for the Applicant is that the documents authored by Mr. Mbiro cahnot be fairly challenged without first cro:ss-examining fvlr. Mbiro or the Counsel hims.elf. One must first get evidence. that ths Ac,p11cant 8 ·company.is diso~ning those letters. It is then 9ne_can say whether they deserve . being treated ·.as suspect.documents as it·happened in the-case of Bugerere Coffee Estate (supra). According to the Counsell this . requirement emphasizes the necessity to first resort to the provisions of Order Ill rule 4 or Order XI of the Civii Procedure Code before first prematurely embarking on a fishing enterprise. The Counsel submitted further that the companls authority to its 2dvocate is a contract between·them. Section 30 of the Companies Ordinance allows even parol -contracts and there· is no provision in the Companies Ordinance requiring instructions to a Counsel be in writing. A further submission made is th2t section 34 of U,e Companies Ordinance provides that proceedings requiring authenuc2tior by a company may be signe,d by a Director, Se?etary or other authorized Ofi7cer of the Company. The Counsel wonders why his learned friend has gone beyond bounds as . if anybody in the company has raised doubts as to the authenticity of the proceedings. His opinion is that even if the authenticity· of the proceedings were in doubt, the proper course for raising the question of authenticity was by discovery under Order XI or under section 34 of the Companies Ordinance or even by requiring cross examination of the officer involved with the filing of the document~ ur:der Order XIX of the Civil Procedure Code. His conclusion is that authenticity of proceedings is l a matter of evidence which cannot propedy be challenged by way of 2 preliminary objection. On the second limb of objection on Form TM No.1 the Courisel for the Applicant replied that it was filed way back in October 2003. Once th2t form is filed, the Registrar is required to keep record of such agents and the Courise! is not required to file such form each time appearance· is made in court. The Counsel said Regulation 11 (3)(c) recoghizes-:Advocates automatically as an agent by virtue of 9 their enrolmentas'·Advocates of the High Court und~r the Advocates Ordir'1ance ,•;it;-, valid practicing licences. Further argument by the Counsel for the Appliccnt Company- is that he can only be removed from the Registrar of Trade ~,;larks Agent under Rule 11 (5). {c) if he is struck out of the .Roll of Advocates. The Counsel for the Applicant is mindful of his position as a Senior Counsel and feels offended to bs 1 branded an imposter by the _Counsel for the Respondent and the Interested Party. •His views are that it is only ad hoc agents who should fill such forms but noi enrollee advocates as required by Regulation 11 (3)(c) and (S)(c). He s2id the Advocates Ordinance which empowers advocates generally to appear before the High Court, is an Act of Parliament, far superior to the Trade and service Marks Regulations which cannot override the provisions of the said Ordinance. -f In determining whether this objection has merit or not, this court cannoi avoid the question of how can. the court ascertain whether tt:le Counsel for the Applicant has been dully ·authorized to institute the proceeding or h2s the prescribed Trademark Form No.1 from the Applicant company authorizing him (c aci on beh=:U of the Company. Once the question how comes in, it means that something is required as proof that the Advocate for the Applicant has been dully authorised or has filed the prescribed Trademark -Form No. TMI. The submissions made by the Counsel for the Re~pondent and the Interested Party show that documents are required. This means that a tho.rough scrutiny of the dqcuments filed by the Applic.2nt has to be made to ascertain whether _the Applicant has ·filed those documents. If ths 0 court will have to do so, the matter ·raised by the Advocate for the Respondent and the Interested Party cannot qualify as a preliminary· point of objection. The court h2s to search for evidence so as to be satisfied with compliance. In terms of the decision . of Citibank Tanzania Limited V TTCL (supra) a matter which c2n:1ot bs d2t2tmineci IO ~ .seath for evidence cannot be raised as a preliminary objection. it is s!sc cismissed. ""'i I wm also totally ·agree with Mr. Marando that w~ere the Applicant Comp2ny has not questioned the authority of its advocate to represent it, I would not think th2'. rt is wise for the· Counsel for the other Party to raise that question. This is a matter which requires evidence to prove it. In the Russian Case (supra) Lord Atkin pointed out very clearly that authority ~O sue cannot be raised as a matter of defence evei1 where that authority is defective. Mr. Marando felt offended by the way ths submissions_were ·m_ade by the Counsel for the Respondent and the lntsrs~tcd P2r.·:1 on this point of objection. My considered views are that Mr. Marando is Justif12c le•· have that feeling and I urge Advocates to have respect for eacr: other when rn2kin9 submissions or arguments. Respect must always prevail betv,een members· of the bar. The other point of objection raised concerns the afTidavit of Lucy M2ndar2. i'. was submitted by the Co_uns~I for the Respondent and the Interested Party that th:= affidavit is bad in law and is incurably defective. The court was referred to the cases of Thssen Stahl Union Export GMBH Vs Kibo Wire Industries Ltd f1973] LRT No.54, Uganda V Commfssioner of Prisons Ex Parte Matovu (1966) EP.. 5, t.1. O.T. Dobie Tanzania Limited V Phantom Modern Transport (1985) Ltd Civil Reierenc2 No. 15 of 2001 and 3 of 2002 (unreported). The Couns_~I for the Respondenl 2nd the Third Party urgued that the affidavit does not state facts. It is a legal discours=.;, expresses opinion, contains ~rgument, prayers, submissions and conclusions. f:.. prayer was made to strike out the affidavit. 1' 11 Th-~ Counsel: for .the Applicant responded by conceding that some paragraphs in the· .affidavit.of Lucy Man:dara are offensive for failing to comply with Order XIX rule 3- of the Civil Procedure Code 1966 but he denied that it is the wh9le affidavit which . . ~ . (j . i~ defective. Relying on the case of Phantom (supra) cited by th~1Counsel for the Respondent and the Interested Party, the Advocate for the .A.pplicant said that the offensive paragraphs can be-expunged or overlooked leaving the substantive parts of it intact so that the court can proceed to act on it. He prayed th2t the objection be dismissed. ~ I.._ Having closely examined the affidavit of Lucy Mandara, I agree that para 2 contains matters which should not have been included. However, f:!Y :easoned opinion is that if those matters are struck out, the affidavit of Lucy Mandara can be acted upon. I therefore reject the prayer for having the whole affidavit be struck out. Instead,· I wil.l order the offending portions in paragraphs 2 and 3 be stiuck out. The portion 1n para 2 which shourd remain is - " Together with .this Chamber Summons, the Applicant has filed an application to this court." As for paragraph 3 the portion which should remain is: · " The Applicant has a/so filed a statement of case. The said statement of the case forms part of this affidavit" My considered opinion is that if the offending portions are remo,,1sd from the affidavit of Lucy Mandara the portion remaining will suffice to meet the requirement of Order XIX rule 3 of the Civil Procedure Code, 1966. As regards ths ~ t3temen\ cf .,... 12 the case .which Lucy· Mandara says that it forms part of her afiidavii whfcr1 the Counsel for the Respondent and the Interested Party has challenged, I wlll say ih2.\ the challenge. has no basis. Mr. Marando submitted correctly th2t there wc.s nc, authority submitted before this court showing that' a separate docl'rn2:-;t can,:ol forrT1 part of an affidavit. The adopti_on of the statement cannot render the affidavit defective. For other objection raised, it was submitted by the Counsel for the Respondent and the Interested Party that Rule 97 which requires the Registrar to be served has been v_iolated in that the Registrar has not been served. J:,nothe: is :h2t the application against the-Respondent has been overtaken by even:s. That by virtue of the assignment and the fact that the same has been recorded in the register. ths trademarks no longer belongs to the Respondent and so the Respondent has bee,: wrongly implead_ed. The Counsel for >the Applicant submitted in reply that the two limbs o: objection, that- is service on the Re_gistrar and the assignment and ownership of the trade mark are matters· of evidence. Surely they .are. This court need not v,aist its precious time. on this m_atter. Evidence is required to prove Yvhether there w2.s service on the Registrar or not. Again, evidence will be required to prove the assignment and ownership of the trademark. Going. ~ack to what constitutes 2 preliminary objection as per the decision of Citibank Tanzania Ltd V TTCL & Others (supra) both matters do not qualify to be raised as preliminary objection5. Evidence is required to prove service as well as assignment 2nd ownership of thE: trade mark. The objection is equally dismissed. 13 Th~ last objection _rel.ates ·to ·the m_anner of filing of the application bekre this court. The Counsel· for -the .R~s-pondent and the Interested Party submitted that the Trade and Service Marks Act does noi prescribe the procedure for filing ff; application for rectification or for a removal of mark from the Register. The prccsdurs is only prescribed: fot an_ application when made before the Registrar. Form TM No.23 is used. The Counsel said this omission can be taken care of by relying on th2 provisions of Section 2 (2) of the Judicature and Application of Laws OrdinancE, (JALO) Cap 453 by using the procedure appiicable in Engl2nci viheiE' s:_;.:~- applications are commenced by originating .summons supported by af'f102\ :1 .')· affidavits. Relying on Kerly's Law of Trademarks and Trade N2mes by T..t, 2:2:-;C'.~ White and Robin· Jacob 12th Edition at page 207, the Counsel for the Respcndff,t ) : and the Interested Party submitted that the Counsel for the Applicant ought to h2vs followed the same procedure. Citing order 43 Rule 2, the Counsel said that L1e provisions require the filing of ~ chamber summons supported by an affidavit. Ths Counsel questioned the basis for having the statement of the c2se bE filed togeihEr with the affidctvit. The opinion of the Counsel is that the Applicant filed improper documents in court and the action which should be taken is to .struck them out for being improperly filed. The case of Salume Namukasa V Joseph Bukya (1966) =f:.. was cited as a _supporting authority. ) . The Counsel for the-Applicant submitted that ui:,der section 35(,) of the Tr2ce and -Service Marks Act, -a prayer for removal of trademark can only be made iJ ths court by way of ·an application. The same method applies for a prayer for rectification under Section 36. The Counsel submitted that Form TM No.23 which is given at ·page 192 of the Regulations provides that i1 should be accompanied by a staien\srd of the case in duplicate and it is .made under Section 35 and 36 and Regulation 65. · The ·Counsel for the Applicant is of a view that as the two seciions piovids fo, 14 . ma.king of the application in the court, then the Regulations prescribe the procedure . . by which to mov·e the court. An application under the Trade Marks Act is lodged by combining the use of both the Civil Procedure Rules and the Tr2de and Ser1ice Marks Regulations. Acc·ording to the Counsel for the Applicant theis 'vV2s a ciilemmc in make an option of -the procedure to ~e used because by using an affidavit per se he would not .be in a position to establish the cause of action because such facts would not be accommodated in an affidavit. That is why a statement had to be filed together with the affidavit. The Counsel for the Applicant concluded that the application is properly before the court. The Counsel for the Applicant concluded his submission by citing the case of D.T.Dobie (Tanzania) Limited V Phantom Modern Transport (1985) Ltd Civil Application No.141 of 2001 (CAT) (Unreported) where it was stated thai the rules of procedure should do justice, not to block litigants from the doors of justice. The Court was also referred to a Nigerian Case of Famfa V A.G.F (2003) II /1/1.J ..S.C 65 21 ~.75 paras A-C where the court held that: "Procedure is to guide orderly and systematic presentation o; a cause, it is to help the substantive law and not to enclave it. n r Well, it is clear that the Trade-and Service Marks Act does not provide for a det~:iisd procedure which should be used for making an application in court for removal of a trade mark and rectification of register. Because of this omission, a pa :iy wishing to move the court for the said prayers must present an application by using the best available method. The submission mad_e by the Counsel for the Ap~,iic2nt jt.:s'_if:es • w_hat he has done. For this reason this cou:-t rejects the propos2l r:-;2c'.: :,_. ::-,::=: Counsel for the Respondent and. the Interested Partv, that the documsr:is lack ie2a, ..., I 15 ' basis. The Counsel- for the _Respondent and the Interested Party 2dmitted ihai no . . procedure is provided for btthe relevant law'!i entirely agree with the decisions cited by ·the Counsel for the Applicant that the doors for the courts must always be left wide open and· procedural technicalities must not be used to deny litigants the right of arguing their ·cases in co·l/rt. The right to sue is a constitution2i one. The court itselt'must not restrain parties from using their right to sue by using technicalities:- All having been said, I am satisfied that no serious points of l::w have beer: raised. All the objections must fail. They are according dismissed with cos~s. N.P.KIMARO, JUDGE 04/10/2004 Date: 15/10/2004. . . Coram:.Hon. N.P.Kimaro; Judge . ..... For the Applicant - Mr. Mnyele. ,.. For the Respondent - Mr. Mrema. CC: R. Mtey. Court: Ruling delivered today. Order: All the preliminary points of law are dismissed with costs. N.P.KIMARO, JUDGE I • 15/10/2004 , .. (. ,• -.,. . 4'