[2023] UGCommC 224

#### THE REPUBLIC OF UGANDA

## IN THE HIGH COURT OF UGANDA AT KAMPALA [COMMERCIAL DIVISION]

#### CIVIL SUIT NO. 917 OF 2018

## UGANDA BATTERIES LIMITED ::::: : : : : : : : : : : : : : : : : :::: : : : PLAINTIFF VERSUS

# NILE BATTERIES LIMITED:::::::::::::::::::::::::::::::::::::::: DEFENDANT BEFORE: HON. LADY JUSTICE ANNA B. MUGENYI JUDGMENT

#### PLAINTIFF'S CASE

The plaintiff brought this suit against the defendant for alleged infringement of its registered trademark \*UBL" by trading its batteries under the name, style and mark of"NBL" and that the defendant's use ofthe said batteries amounts to passing off.

The plaintiff contends that it has owned the UBL trademark number 19267 under class 9 since 1't December 1994 plus literary works contained in its UBL warranty card for which it has gained reputable goodwill. Around October 2018, the plaintiff learnt that the defendant was manufacturing batteries bearing an unregistered"NBL" mark accompanied by a warranty card similarly worded to its own. The plaintiff obtained an injunction restraining the defendant from further infiingement of its intellectual property which the defendant defied. The defendant later registered another mark and produced a different warranty card.

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#### DEFENDANT'S CASE

The defendant denies infringing the plaintiff s trademark or alleged copyright and states that the plaintiff has no copyright in the alleged literary works in the warranty card. The defendant contends that it is the owner of the copyright in the literary works contained in its warranty card.

During the hearing, the plaintiff presented one witness, Marvin Mulinde, (PW1) while the defendant presented Jay Patel (DWl). Counsel for both parties agreed to file written submissions which have been considered in this Judgment.

#### REPRESENTATION

The plaintiff was represented by M/s S & L Advocates and the defendant was represented by M/s Arcadia Advocates.

#### JUDGMENT

During the scheduling conference the parties agreed on the following Issues for determination by this Court:

- ¹. Whether the plaintiff has a copyright in the alleged literary works contained in the warrant card. Ifso whether the defendant infringed the alleged copyright in the warrant card. - 2. Whether the defendant infringed on the plaintiff s trademark and copyright and/ or passed offits batteries as the plaintiffs - 3. What are the available remedies?

### Issue l: Whether the plaintiff has a copyright in the alleged literary works contained in the warrant card. If so whether the defendant infringed the alleged copyright in the warrant card.

PW1 stated in his witness statement that the plaintiff is the owner of literary works contained in its warranty card which provides information on how to utilise the warranty provided for use of the battery, installation of the battery in the vehicle and care and maintenance of the battery. A copy of the plaintiff s warranty card was exhibited as PEX2. PWI stated further that the defendant infringed the plaintifls copyright by reproducing and authorising the reproduction ofthe plaintifls entire work in material form as their warranty card.

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DWl averred that the plaintiff has no copyright in its warranty cards as they consist of scientific ways of usage, ordinary rules of commerce and instructions for installation of batteries e.g. how batteries are installed in a vehicle, how to obtain ^a warranty, what invalidates a warranty, how to maintain a battery, how to dispose of them in an environmentally friendly manner etc. and that the defendant's warranty card is not similar to the plaintiff s. He stated further that the defendant's warranty card like all other warranty cards for different manufacturers contains scientific ways of usage, ordinary rules of commerce and instructions for installation of batteries and the plaintiffdoes not own any copyright in the alleged warranty card.

The plaintiff, through PWl, contends they are the author of the warranty card that is the subject of the present suit. Under section 2 of the Copyright and Neighboring Rights Act, 2006 an Author is defined as follows;

"Author" means the physical person who created or creates work protected under section 5 and includes a person or authority commissioning work or employing a person making work in the course of employment.

Section 4 of the Copyrights and Neighboring Rights Act provides for the right to copyright protection for the Author of a work and states that the author ofany work specified in Section 5 shall have a right of protection of the work, where work is original and is reduced to material form in whatever method irrespective of quality of work or the purpose for which it is created.

Counsel for the defendant submitted that the plaintiffdid not adduce any evidence to prove they were the author of literary works and that their said literary works were original and cited case law to support their argument. The defendant, however, did not adduce any evidence to prove that the literary works were authored by any other person and that the said works were not original.

The defendant further submitted that the content of the warranty card constitutes ordinary scientific principles and customary principles of doing commerce; and there was no independent skill or thought in bringing together ordinary and customary purposes of doing economics and science relating to batteries etc.

In explaining what an original work is, Honourable Justice Kiryabwire in the case of Stella Atal v Ann Abels Kiruta HCCS No. 0967 of 2004 cited the case of Emerson v Davies (1845) 3 Story 768 at 778-779 where the court held as follows:

"The question is not, whether the materials which are used are entirely new, and have never been used before; or even that they have never been used before for the

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same purpose. The true question is whether the same plan, arrangement, and combination of materials have been used before for the same purpose or for any other purpose. If they have not, the plaintiff is entitled to a copyright, although he may have gathered hints for his plan and arrangement, or parts of his plan and arrangement from existing and known sources. He may have borrowed much of his *materials from others, but if they are combined in a different manner from what was* in use before... he is entitled to a copyright... It is true, that he does not thereby acquire the right to appropriate to himself the materials which were common to all persons before, so as to exclude those persons from a future use of such materials; but then they have no right to use such materials with his improvements superadded, whether they consist in plan, arrangement or illustrations, or combinations; for these are strictly his own."

Further, the Honourable Judge while stating that it is possible to create a personal copyright from pre-existing materials provided what is created is different from what has been in use before cited the case of British Northrop Ltd v Texteam **Blackburn Ltd [1974] RPC 57 at 68** where it was held that:

"Copyright is concerned not with any originality of ideas but with their form of expression, and it is in that expression that originality is requisite. That expression need not be original or novel in form, but it must originate with the author and not be copied from another work... a drawing which is simply traced from another drawing is not an original artistic work: a drawing which is made without any *copying from anything originates with the artist.*"

From the above authorities and in the absence of any evidence adduced by the defendant to prove that the literary work in the plaintiff's warranty card was not its own and was copied, I find that PW1's evidence in that regard remained unchallenged and the plaintiff has a copyright in the literary works contained in the warranty card in issue.

As to whether the defendant infringed the plaintiff's copyright in the warranty card, the plaintiff adduced PEX7 as the plaintiff's warranty card that had been copied word for word by the defendant while the defendant denied the said warranty card and further contended that its source or original version was never shown to the court.

Section 46 (1) of the Copyright and Neighbouring Act provides that:

"Infringement of copyright or neighbouring right occurs where, without a valid transfer, licence, assignment or other authorisation under this Act a person deals

with any work or performance contrary to the permitted free use and in particular where that person does or causes or permits another person to:-

- a) reproduce, fix, duplicate, extract, imitate or import into Uganda otherwise than for his or her own private use; - b) distribute in Uganda by way of sale, hire, rental or like manner; or - c) Exhibit to the public for commercial purposes by way of broadcast, public performance or otherwise. "

Case law has established that copyright infringement is the unauthorised use of material that is covered by copyright law, in a manner that violates one of the copyright owner's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.

In the case of Ssebagala v MTN (U) Ltd & Anor HCCS NO 283 OF 2012 Justice Madrama stated that:

"To constitute infringement of the copyright within the meaning of section 46 of the Copyright and Neighbouring Rights Act, the Plaintiff must demonstrate that the Defendant has duplicated or reproduced the copyright material for commercial purposes or for sale. "

Further, copyright shall be deemed to be infringed by any person who distributes either for purposes of trade or such an extent as to affect prejudicially the owner of the copyright. (Lamwaka vs M/s Mukono Bookshop HCCS 326 of 2014; Gasston and Harbour vs Bwavu Mpologoma Growers Co-operative Union Limited and others [958] EA 549)

PWl, in cross-examination, testified to the effect that the warranty card allegedly copied and produced by the defendant (PEX 7) and which infringed its copyright was obtained by a private investigator, one Robert Mugabe, after an Anton Pillar order was made against the defendant.

However, the said warranty card was denied by the defendant through DWI and the said Robert Mugabe who carried out the investigation was not presented in Court to testifi to his actions/ findings of his investigation as well as the authenticity/ origin ofthe warranty cards in issue.

No warranty cards for alleged battery purchases were produced in Court and neither was any evidence of reproduction of the same by the defendant that prejudicially

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affected the rights of the plaintiff adduced in Court. Instead PWI preferred not to answer any questions related to the report of the investigator from which the warranty card in issue appears to have been gotten and stated that he would be availed to testiff though the said investigator was not presented as a witness by the plaintiff and his statement was expunged accordingly.

In the circumstances and in the absence ofany concrete evidence to demonstrate that the defendant violated the plaintiff s copyright in respect ofwarranty card, this Court is inclined to agree with counsel for the defendant that the plaintiff has failed to prove its case of infringement against the defendant in this regard and this part of Issue I is resolved in the negative.

## Issue 2: Whether the defendant infringed on the plaintiffs trademark and copyright and/ or passed off its batteries as the plaintiffs

PWI testified in his witness statement that around October 2018, the plaintiff leamt of the production of similar looking batteries on the market in the name, style and mark of "NBL" manufactured by the defendant and referred Court to photographs of the defendant's and plaintiff s batteries (exhibit PEX4). That the plaintiff retained a private investigator who obtained the defendant's infringing batteries which included warranty cards whose contents were exactly the same as the content contained in the plaintifls warranty card. A copy of the investigation report was adduced as evidence for the ptaintiffand attached to the plaintiffs trial bundle but was later abandoned by the plaintiff together with the evidence of the private investigator.

PW1 avened that the defendant's trademark is similar in appearance to the plaintiff ^s trademark for instance the colouring of the package, lettering forming the characters of the trademark pa(icularly the power/ lightening symbol in the letter'B" as seen in exhibit PEX4; that the packaging of the batteries is also similar in terms of colours used on the packaging, position of the marks and the defendant's inclusion of the UNBS certification mark which it had not obtained; and that because of the resemblance between the defendant's offending mark "NBL" and the plaintiffs mark "UBL"I, the defendant's trademark is likely to be taken and has in fact been taken by the general public as belonging to or associated with the plaintiff.

PW I stated that because of the strong resemblance of the marks, the plaintiff became apprehensive of the confusion the defendant's mark would cause in the market with its own and obtained a temporary injunction on 3'd May 2019 restraining the defendant from dealing with the infringing batteries and warranty cards; that the

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defendant refused to comply with the said order and proceeded to commission the batteries; and that the defendant continued to sell and or distribute its products contrary to the temporary injunction. The defendant subsequently applied to register its infringing mark as a trademark but it was rejected by the Registrar of Trademarks due to its similarity with the plaintifls registered trademark and likelihood to cause confusion among the general public. The defendant has now changed its impugned mark following the Registrar of Trademarks' refusal to register the offending mark.

DWI stated that the defendant has never infringed on the plaintiff s trademark since its mark fundamentally differs from that of the plaintiff; that the plaintiff has never been a registered proprietor ofany mark described as "UBL" as consisted in ordinary letters of the English alphabet; that the mark on the defendant's batteries was an abbreviation of its registered name "Nile Batteries Limited" as an innocent use of the letters "NBL" with a rectangle going all round the letters and a motor vehicle at the top of the letters NBL making it distinctively different; and that the defendant's use of the universal symbol particularly the lightening/ power mark is very distinctive from that ofthe plaintiffbecause it cuts through the letter B and has a car parked right behind it.

He stated further that the plaintiff s trademark does not give it exclusive use of the words "UBL" except as graphically represented in colour and that to that end the font used by the plaintiffis materially different from that used by the defendant and the defendant's mark has protrusions of art.

DW1 testified that the defendant only prepared to launch the batteries but had neither offered to sell its batteries nor have agents in the market; that the only batteries that were produced were samples that were to be used for the launching and commissioning purposes which was prior to the suit and injunction therein; and that there have never been instances of confusion between the plaintiff s and defendant's batteries because the marks and aesthetics of the batteries are materially different and the defendant had not offered any of its batteries for sale at the time of the suit and the plaintiff did not find any infringing material at the defendant's premises.

He stated further that the defendant has never violated the orders of the Court and has never employed or engaged Pranisha or Kyabazinga auto parts or any other persons as agents for purposes of sale or distribution of its products with the impugned mark; and that the defendant had no knowledge ofthe receipts referred to by PWI on of which had been fraudulently altered from UBL to NBL.

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This Court has had the opportunity to look at the plaintiff's registered trademark as presented in PEX1(b). The said trademark contains blue letters "UBL" with a power/ lightening mark in the middle of letter "B" and is bordered with a red rectangle that goes all round the said letters.

This Court, however, observed that the trademark that the plaintiff appears to have based this suit on (see PEX4 and PEX5) is different from that which it registered with the Registrar of Trademarks as seen in PEX1(b) since it clearly indicates a blue rectangle (and not red) that borders the UBL letters therein. PW1 confirmed that the trademark the plaintiff registered was the one with a red rectangle and not the blue rectangle. This then raises the question as to whether the plaintiff has locus to bring this suit against the defendant in as far as alleged copyright infringement is concerned.

Part IV of the Trade Marks Act of 2010 provides that:

## "Part IV – Effect of registration and action for infringement

#### 34. No action for unregistered trademark

A person may not institute proceedings to prevent or to recover damages for an unregistered trademark".

From the above provision of law, it became clear to this Court that the plaintiff's registered trademark is not the basis of its claim as alleged and it, therefore, has no locus to file the present suit which is improperly before the Court.

Be that as it may and as earlier stated, the plaintiff did not adduce any of the batteries or warranty cards that were allegedly obtained by a private investigator who was also not presented in Court to testify to his actions and findings from the alleged investigation. The plaintiff did not avail to Court any of the batteries allegedly bought against the receipts presented in Court and no witness was presented to testify about the said purchases. In fact, PW1 during cross-examination, confirmed that what was allegedly obtained from the defendant's premises were dummy batteries which were also not produced in Court by the plaintiff. He told Court that a private investigator would be presented to speak to his investigation report but the said person did not attend Court and as earlier stated his witness statement was expunded.

I agree with the submissions of counsel for the defendant that although the Court granted the plaintiff an Anton Pillar injunction allowing it to access the plaintiff's premises, inspect and confiscate any infringing items and deposit the same in Court, no infringing warranty cards or batteries were seized either in the market or

deposited in Court and neither did the plaintiff file a retum after execution of the said Anton Pillar order.

In the premises and from all the fore going, I find that the plaintiff has failed to prove before this Court that there was any infringement of the plaintiff s copyright as alleged. In any case, PWI testified that the defendant registered a new trade mark with the Registrar of Trade Marks and the plaintiff is not offended by the same mark.

In the result and given the outcome of this Judgment, the plaintiff s suit is dismissed and each party will bear their own costs of the suit.

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# HON. LADY JUSTICE ANNA B. MUGENYI

DATE,T) 8..k..1.u..ks.....