Neelkanth Lime Limited v Wonderful Industries Company Limited (2022/HPC/0807) [2024] ZMHC 210 (2 August 2024)

IN THE HIGH COURT FOR ZAMBIA AT THE COMMERCIAL REGISTRY HOLDEN AT LUSAKA (Civil Jurisdiction) HIGH COURT OF ZAMBIA JUDICIARY COMME~CIAL DMSION 2022/HPC/0807 BETWEEN: - 2 / 'I" 21'1"' .. !. I I - ) NEELKANTH LIME LIMITED REGISTRY P. O. BO)( 50067, LUSAKA PLAINTIFF AND WONDERFUL INDUSTRIES COMPANY DEFENDANT LIMITED Before: Hon. Lady Justice Chilombo Bridget Maka For the Plaintiff: Mr. W. Muhanga - Messrs. Willis Clement and Partners Legal Practitioners. For the Defendant: Mr. B. Mwanza - Messrs. Nsapato and Company. JUDGMENT Legislation Referred to: 1. The Trade Marks Act, Chapter 401 of the Laws of Zambia .., Cases Referred to: 1. Cochrane Steel Products (PTY) vs. F. Harrop-Allin & Sons (PTY) LTD2022 Case No. 6031/21 2 . L'or eal SA vs. Bay International AG ECJ/C - 324/09 12 July, 2012 3. Zambia Revenue Authority vs. Hitech Trading Company(2001) ZR 27 4 . Khalid Mohammed vs. The Attorney General (1982) Z. R. 49 (S. C) 5 . Phillip Mhango vs. Dorothy Ngulube and Others 1983 Z. R . 61 > 6. Hitech Logistics Limited vs. Ugondo Italian Style Limited (2020) ZMCA 92 7 . Miller vs. Minister of Pensions (1947) 2 ALL ER 372 Other Works Referred to: 1. Kerly's Law of Trade Marks and Trade Marks 2. Kanja, G. M., (2006) Intellectual Property Law, Lusaka: UNZAPRESS 1. Introduction 1.1 Trademarks are fundamental to intellectual property law, acting as crucial assets that differentiate products and services in the marketplace. For a trade mark to provide exclusive rights to the owner, it must b e properly registered and valid. Any una uthorized use of the trade mark by a third party constitutes trade mark infringement. 1.2 In an effort to enforce its exclusive trademark rights, Neelkanth Hydrated Lime Limited, the Plaintiff, has initiated an infringement action against Wonderful Industries Zambia Company Limited, the Defendant, via a writ of summons and statement of claim filed in Court on 9 th December, 2022. 1.3 The Plaintiff alleges that the Defendant has infringed its Neelkanth Hydrated Lime trade mark and is seeking the following reliefs: i.) A perpetual and mandatory injunction to restrain the Defendant either by itself, its directors, officers, servants or agents or any of them or otherwise however J2 from doing the following acts; that is to say, infringing the Plaintiffs Registered Trade Mark No. 966/2012. ii) . Obliteration upon Oath of all marks and the words NEELKANTH HYDRA TED LIME or any colourable imitation of them thereof upon all 25 kg bags of the Defendant Company's Products without consent of the Plaintiff. iii). Immediate ceasation of the use of which bearing the words NEELKANTH HYDRATED LIME would be a breach of the injunction prayed for and a verification upon Oath that the Defendant Company no longer has in its possession, custody or control any articles so marked. iv). Any inquiry as to damages or at the Plaintiffs option on account of all profits and payments of all sums found due upon taking such inquiry or account under the use made thereof and before this action of the Plaintiffs trade mark. v. Payment of the sum of USDl, 000,000.00 being damages for breach of contract. vi. Further damages for the infringement of the Trademark. vu. Damages for reputation injury and loss of good will. v111. Any further or other relief which the Court may deem fit and equitable. ix. Costs of and incidental to this application. 2 . Statement of Claim 2. 1 Th e Plaintiff aver s t h a t it is the registered owner of Neelkanth Hydrated Lime tra d e m ark , duly registered with Patents and Com panies Registration Agen cy (PACRA). The trad e m ark 's registration number being 966/201 2 in class J3 16 in respect of stationary /printed matter as of 9 th August, 2012. 2 .2 The Plaintiff 1s also the manufacturer of hydrated lime which it claims is packaged in its patented packaging materials. It was further asserted that the Defendant has, in the course of business, purchased and distributed hydrated lime from the Plaintiff. 2.3 The Plaintiff averred that in May, 2021 , the Plaintiff became aware ofan unknown person who was selling waste lime packaged in 25kgs bags labeled Neelkanth Hydrated Lime. The Plaintiff visited Kasumbalesa to confirm this information and found 25kg bags of waste lime and empty bags labeledNeelkanth Hydrated Lime. The person behind these items was not found. 2.4 In March 2022, the Defendant's Management Team which included Mr. Mark Sinyangwe, visited the Plaintiffs factory to place an order for one ton of Hydrated Lime and a 25 kg empty Neelkanth Lime branded bag. The Plaintiff requested the Defendant to provide sample bags that they would use to supply the lime in order to assess their efficacy, given that the Defendant had initially requested only one empty bag. 2.5 That it was in the course of the aforestated visit that Mr. Mark Sinyangwe revealed to the Plaintiff that the Defendant had prior to this transaction, manufactured bags with the Neelkanth logo and trade mark. This made the Plaintiff to J4 conclude that these were the same bags that were found at Kasumbalesa Border and further supplied to a Congolese National by the name of Mr. Ndalama. 2.6 Further, it was asserted that Mr. Mark Sinyangwe also submitted to the Plaintiff a delivery note numbered 3735 dated March 7 , 2022, and customer name order number 10105. These documents were deemed illegal as the Plaintiff had not consented to the supply of lime purportedly under the Neelkanth Limited brand. 2.7 On March 8 , 2022, Mr. Mark Sinyangwe informed the Plaintiff about the Defendant's client who was at the factory and was about to collect an order for Hydrated Lime from the Defendant. The Plaintiff, accompanied by Zambia Police Officers, hurried to the Defendant's business premises where the individual in question was subsequently arrested. 2.8 The Plaintiff claims that the Defendant has infringed its Neelkanth Hydrated Lime trade mark by using it in the course of trade within Zambia. Further, that the Defendant has used the Neelkanth trade mark or a colorable imitation of a distinctive feature thereof. 2.9 The Particulars of infringement are stated as follows: 1. Unauthorized use and manufacturing of 25kg bags with Neelkanth Lime Logo branded on them, a patent duly registered by the Plaintiff. JS 11. Unauthorized packaging and supply of unknown product passed off as hydrated lime to unsuspecting members of the public. 111. Loss of the reputation of the Plaintiff and goodwill. 2.10 The Plaintiff is concerned that the Defendant threatens and intends to persist in the acts of infringement complained of. It further laments that, while it transacted with the Defendant in good faith, the Defendant secretly continued to manufacture and brand 25kg bags using the Plaintiff's logo. 2.11 Furthermore, that the Defendant misrepresented an unknown product as Neelkanth Hydrated Lime. As a result of these actions, the Plaintiff has suffered damage and loss. 3. The Defendant's Defence 3.1 The Defendant entered appearance and filed defence on 20th January, 2023. 3 .2 The Defendant averred that it is a private limited company duly incorporated under the Laws of Zambia. The Defendant manufactures generic sacks, among others. 3.3 The Defendant disputed the existence of any patent as alleged by the Plaintiff. It further denied any previous purchase and distribution of hydrated lime for the Plaintiff. 3.4 The Defendant asserted that it had previously approached the Plaintiff to pitch for the business of manufacturing 25kg J6 and one-ton bags. That it was customary in the business to present an empty and unlabeled bag when pitching to potential customers. Therefore, the Plaintiff received a sample of an empty and unlabeled bag from the Defendant as per this custom. The Defendant denied producing any lime or selling it to a Congolese National. 3.5 Furthermore, the Defendant denied sending a delivery note to the Plaintiff and asserted that it has never engaged in lime supply. According to the Defendant, in mid-2021, they received an order purporting to be from the Plaintiff to manufacture 25kg empty bags. Upon receiving the order, the Defendant contacted the Plaintiff to confirm it, but the Plaintiff denied placing the order. 3.6 At the instance and effort of the Defendant, the person who purportedly placed the order on behalf of the Plaintiff was arrested by the police. The Defendant denied any unauthorized use or manufacture of the 25kg bags. Additionally, the Defendant denied the alleged infringement of the Plaintiff's trademark and any alleged continued infringement. 3.7 Save as expressly admitted the Defendant denied each and every averment as though the same was set out and transversed seriatim. J7 4. The Plaintiff's case 4.1 The First witness for the Plaintiff was Mr. Anil Soni, the Operations Manager for the Plaintiff Company. 4.2 He testified that in May, 2021, he became aware that unknown persons were selling hydrated lime packed in 25kg bags with a Neelkanth Lime Logo at Kasumbalesa. The Certificate of registration of Neelkanth Hydrated Lime trademark was shown in the Plaintiffs bundle of documents. 4.3 Mr. Soni stated that he visited Kasumbalesa to verify the information regarding the sale of hydrated lime in Neelkanth-branded 25kg bags. Accompanied by the police, the visit revealed that some 25kg bags filled with lime were stored at a property in Kasumbalesa. Efforts to locate the person behind the consignment were unsuccessful. However, the materials were collected, and laboratory examination showed that the substances in the 25kg bags labeled as Neelkanth lime were actually inferior quality lime. The report from the laboratory findings is included in the Plaintiffs bundle of documents. 4.4 Following the events described above, three officers from the Defendant Company, including Mr. Mark Sinyangwe , visited the Plaintiffs Company in March 2022. The purpose of the visit was to collect a previously placed order for one ton of hydrated lime and a 25kg empty bag branded as Neelkanth lime. J8 4.5 During the visit to the factory, Mr. Soni requested the Defendant to provide a sample of the bags they intended to use for supplying the hydrated lime. The purpose was to assess the bags' efficacy, as the Defendant had only initially requested one empty bag. 4.6 He further stated that during this visit, he discovered that the Defendant had been manufacturing bags for hydrated lime featuring the Neelkanth Hydrated Lime logo and trademark. This led Mr. Soni to suspect that these were the items discovered at the Kasumbalesa border. 4. 7 Mr. Soni went on to testify that the Defendant subsequently supplied Neelkanth hydrated lime branded bags to a Mr. Ndalama of Congolese origin. Additionally, he received a delivery Note No. 3738 dated 7 th March, 2022 and a customer name Order No. 10105 from Mr. Mark Sinyangwe. 4. 8 These documents were alleged to have been prepared without the Plaintiffs consent for the supply of bags branded with the Neelkanth hydrated lime logo. 4. 9 That on 8 th March, 2022, Mr. Mark Sinyangwe informed Mr. Soni that a client was about to collect an order of the branded bags from the Defendant. Acting on this information, some employees from the Plaintiff, accompanied by Police Officers, rushed to the Defendant's premises and arrested the said client. 4.10 Mr. Soni testified that since May 2021, the Defendant has infringed on the Plaintiff's registered trademark. This J9 infringement involves manufacturing 25kg bags with the Neelkanth hydrated lime logo without express authorization. 4.11 During cross-examination, Mr. Soni confirmed that Neelkanth lime is a registered trade mark and not a patent. He further confirmed that for infringement to occur, the Defendant must have products bearing the Plaintiffs trade mark. He admitted that he never found the Defendant's employee selling bags with the Plaintiffs trade mark. 4.12 Mr. Soni confirmed that the Neelkanth branded bags were found at Kasumbalesa border and no employee of the Defendant was found selling the infringed bags at Kasumbalesa. 4.13 He reiterated that Mr. Mark Sinyangwe and Defendant's General Manager visited the Plaintiff's Plant because they wanted to sell bags which the Plaintiffwas producing. He was later shown samples by Mr. Mark Sinyangwe which the Defendant was producing. 4 . 14 However, Mr. Soni admitted that Mr. Sinyangwe and his team approached the Plaintiff to discuss business because they intended to manufacture the Plaintiff's bags. Mr. Soni clarified that during the pitch, the Defendant was already producing the Plaintiff's branded bags. 4.15 When referred to documents at pages 1-4 of the Plaintiffs bundle of documents, Mr. Soni confirmed that those documents only prove that the Plaintiff has a trade mark. JlO 4.16 When Mr. Soni was shown the Delivery Note in the Plaintiffs supplementary bundle of documents, he confirmed that there was no mention of Neelkanth on the note. Furthermore, he noted that the person responsible for preparing the documents or delivering the goods was not identified. 4 .17 However, Mr. Soni maintained that Mr. Mark Sinyangwe had informed him that the Defendant was manufacturing 25kg bags. Upon closer examination of the Delivery Note, it was found that the product was actually described as being in 50kg bags. This clearly contradicted the allegation that the Defendant was producing 25kg bags. 4.18 When asked about the document on page 1 of the Plaintiffs supplementary bundle of documents, Mr. Soni confirmed that it described 'ultra lime'. As a result, it was concluded that the Delivery Note contained no reference to Neelkanth in any way. Regarding another document in the Plaintiffs supplementary bundle , Mr. Soni confirmed it was irrelevant to the case. 4. 19 He further conceded that the only evidence he had to prove that the Defendant had produced Neelkanth products was his word. 4 .20 Mr. Soni also admitted that it was Mr. Mark Sinyangwe who called him that someone wanted to buy the bags. Additionally, that Mr. Mark Sinyangwe had undertaken to Jll help Mr. Soni capture the people who were infringing the Plaintiffs trade mark. 4.21 Lastly, that no employee from the Defendant was apprehended after the raid. He also confirmed that there were no photographs before Court showing a pile of bags containing Neelkanth Hydrated Lime trade mark. Mr. Soni explained that whilst the Defendant was helping him capture the infringer, they were also infringing the Plaintiffs trade mark. 4.22 During re-examination, Mr. Soni clarified that the delivery note was prepared by the Defendant and does not mention the customer's name for security reasons. Instead, an order number is used. 4 .23 The second witness for the Plaintiff was Mr. Chimasa Ngulube, a Detective Sergeant under the Frauds and Financial Investigations Unit at the Central Police Division. 4.24 His testimony is documented in his witness statement dated April 2nd , 2024, except paragraphs 4 and 8, which were expunged for non compliance with the rules of evidence. 4.25 Sergeant Ngulube testified that in June, 2022, the Police received a complaint from the Plaintiff stating that the Defendant was manufacturing bags and printing the Neelkanth Lime logo and trademark on them. 4 .26 This was being done without any local purchase order and or authorization of the Plaintiff. The bags were being J12 supplied to the local market. The Officer investigated the matter and visited the Defendant to verify the complaint. 4.27 Upon reaching the Defendant factory, the Officer found 25kg bags with the Neelkanth Lime Logo filled with some substance. He thereafter apprehended a gentleman who was found at the Defendant's premises and believed to be a supplier of the Defendant. 4.28 When cross-examined, Officer Ngulube conceded that apart from his word, he had no evidence that the Defendant produced sacks with the Plaintiff's trade mark. He confirmed that the gentleman he apprehended was not an employee of the Defendant. Further that he found the gentleman at the Defendant's premises because the Defendant had kept him there. 4.29 When re-examined, Officer Ngulube restated that when he and other Officers visited the Defendant's factory, they found bags printed with Neelkanth trade mark. 4.30 This marked the close of the Plaintiff's case. 5. The Defendant's case. 5.1 The sole witness called by the defence was Mr. Mark Sinyangwe, the Chief Commercial Officer of the Defendant Company. 5.2 He testified that in 2022, he was part of a team from the Defendant Company that vis~ted the Plaintiff to market their sacks. The Plaintiff was targeted because it produces lime, J13 which needs to be packed in sacks. This meant that the Plaintiff would be a good off-taker of the Defendant's sacks. 5 .3 Mr. Mark Sinyangwe further explained that his team pitched 25 kg, 50 kg, and 1-ton sacks to the Plaintiff. As per standard procedure, the Defendant provided sample sacks and shared videos of the manufacturing process for quality assurance purposes. 5 .4 After the pitching exercise, Mr. Mark Sinyangwe maintained contact with Mr. Soni, the first witness for the Plaintiff, with the intention of finalizing a contract between the Plaintiff and Defendant for the supply and purchase of sacks. Mr. Sinyangwe explained that during the negotiation process, Mr. Soni informed him that the Defendant had produced the Plaintiffs sacks, which assertions were denied. 5.5 The Plaintiff, however, indicated that there were individuals producing the Plaintiffs bags, to which Mr. Sinyangwe committed to identifying the persons involved. According to Mr. Sinyangwe, this offer was made in good faith to the Plaintiff as they were in the process of finalizing a contract. 5.6 The Defendant was later approached by a gentleman who wanted sacks bearing the Plaintiffs trademark of Neelkanth Lime. The Defendant informed the Plaintiff about this individual, and the two parties collaborated to apprehend him. This was accomplished when the gentleman was called to collect the sacks, and upon his arrival, he was apprehended by the police. J14 5 . 7 Mr. Sinyangwe testified that the Defendant did not manufacture the ordered sacks. Instead, the Defendant used the order to lurethe individual who falsely claimed to represent the Plaintiff. The apprehended individual was later released from police custody at the instance of the Plaintiff. 5 .8 According to Mr. Mark Sinyangwe, he expected to be awarded a contract by the Plaintiff after helping them capture the imposter who was passing off their product. Instead, he was informed of the Plaintiffs claims of trade mark infringement and potential liability by the Defendant. 5.9 Mr. Mark Sinyangwe explained that although the Defendant manufactures sacks, it does not produce hydrated lime that could be sold in sacks bearing the Plaintiffs trade mark. He reiterated that the Defendant has never produced any product that could be said to infringe the Plaintiffs trade mark. Based on the foregoing, Mr. Mark Sinyangwe urged the Court to dismiss this action. 5.10 During cross-examination, Mr. Sinyangwe explained that the Defendant called the Plaintiff by phone to confirm whether the Plaintiff had sent someone to collect sacks from the Defendant. He further stated that the Plaintiff had verbally authorized the Defendant to produce sample bags bearing the Plaintiffs trade mark. This occurred in the course of establishing a business relationship, during which the Plaintiff allowed the Defendant to send them sacks. JlS 5.11 He confirmed that, due to the authorization, the Defendant had access to the Plaintiffs logo. He pointed out that 100 bags were made with the Plaintiffs authority. He explained that the Defendant could not produce just one bag because the machines were incapable of doing so. Out of the produced bags, only one was taken to the Plaintiff as a sample, while the remaining bags were taken for crushing. 5.12 Mr. Sinyangwe conceded that when the police visited the Defendant's industry, they found sacks with the Plaintiffs logo. At that time, the Defendant did not have an order from the Plaintiff. According to Mr. Sinyangwe, this was the same period when the Defendant produced the sample bag, and during this process, someone approached the Defendant wanting bags for Neelkanth. 5.13 When this person approached the Defendant for bags with the Plaintiffs logo, the Defendant's secretary phoned the Plaintiff to confirm the order. When the Plaintiff said no, the Defendant realized the person was an imposter. He further explained that the Plaintiff had requested the Defendant to apprehend anyone who approached them to order sacks with the Plaintiffs logo. Mr. Sinyangwe emphatically explained that the Defendant manufactures various sacks, and as such, various customers visit the Company to buy sacks. On their part, they only make sacks once they confirm the order. J16 5.14 Regarding the gentleman who approached the Defendant with an order for sacks bearing the Plaintiffs trademark, the Defendant first inquired how he wanted the sacks. Subsequently, the Defendant accepted his order. This was done solely to detain the gentleman, as the Defendant had already contacted the Plaintiff, who provided instructions on how to proceed. Coincidentally, this person arrived soon after the Plaintiff gave the Defendant an order to make sample bags. 5.15 Mr. Sinyangwe denied the assertions that the Defendant had been making sacks with the Plaintiffs logo a year after they were authorized. When referred to the delivery note in the Plaintiffs bundle of documents, Mr. Sinyangwe confirmed that the document was from the Defendant's company. However, he dispelled the assertion that the delivery note was issued to the Plaintiff. 5.16 Lastly, the Plaintiff had assured the Defendant that they would give them an order. This was the reason why the Defendant kept sample bags in anticipation of an order for mass production. 5.17 This marked the close of the Defendant's case. 6. The Plaintiff's Final Submissions. 6.1 The submissions were filed in Court on 14thJune 2024. The gist of the submission was that Neelkanth Hydrated Lime is a registered trade mark under Part A of the Register of J17 Trade Marks. The Plaintiff is the registered proprietor of the Neelkanth Hydrated Lime trade mark and, as such, enjoys exclusive rights and legal protection. 6.2 Section 9(1) of the Trade Marks Act was cited in support of the argument for exclusivity and what constitutes infringement. The Plaintiff further submitted that the reference to a patent in describing the particulars of the infringement does not negate the fact that Neelkanth Hydrated Lime is a registered trade mark. 6 .3 It was further submitted that infringement of a trade mark does not only pertain to the sale of products but also to the manufacturing of infringed products. Additionally, the infringement may not be a one-time act but a continuing one. 6.4 It was contended that the Defendant's attempt to sell or take orders for products bearing the Plaintiffs trade mark, without consent, amounts to infringement. Furthermore, the Defendant went beyond the instructions to make a sample and was found with large quantities of bags bearing the Plaintiffs trade mark, which constitutes infringement. 6.5 The failure to provide justification for being found with large quantities links the Defendant to the findings of such bags with unknown p ersons. 6 .6 It was submitted that Mr. Anil Soni had reasonably suspected that the Defendant had been infringing on the Plaintiffs trade mark when Mr. Mark Sinyangwe conversed J18 with him and revealed that the Defendant had actually been manufacturing Hydrated Lime bags with the Neelkanth trade mark. 6. 7 The South African case of Cochrane Steel Products (PTY) vs. F. Harrop-Allin & Sons (PTY) LTDl 1l, in which the Court held that the unauthorized use of an identified trade mark contravened that country's Trade Marks Act, was cited. 6.8 It was argued that in this case, the unauthorized use of an identical trade mark by the Defendant has been established. The Court was thus urged to find that the Plaintiffs trade mark had been infringed. 6.9 Regarding the evidence of the second witness for the Plaintiff, Detective Sergeant Chimasa Ngulube, it was submitted that his testimony that he found sacks with the Neelkanth logo at the Defendant's premises was not challenged. Thus, it was established that the Defendant had in its possession sacks packaged and printed with the Plaintiffs registered trade mark, which amounts to infringement. 6.10 The Plaintiff further analyzed the evidence of the lone witness for the Defendant, asserting that it was illogical. The Plaintiff questioned how the gentlemen, who allegedly went to the Defendant's Industries seeking sacks, knew that the Defendant was manufacturing sacks for Neelkanth. Additionally, the Plaintiff found it curious that the stranger J19 opted to place an order with the Defendant instead of approaching the Plaintiff. 6.11 The Plaintiff also wondered how the Defendant claimed to have confirmed an order that the Plaintiff never placed. Furthermore, it was submitted that Mr. Mark Sinyangwe's testimony, asserting that the Defendant was not caught infringing, cannot stand when sacks bearing the Plaintiff's registered trade mark label were found at the Defendant's premises. 6.12 The Plaintiff questioned how the sacks were found at the Defendant's premises if the Plaintiff had not authorized their manufacture. It was even more puzzling that Mr. Sinyangwe claimed the bags were later destroyed, yet the Defendant insisted they did not make any sacks. 6.13 The Plaintiff argued that Mr. Sinyangwe's evidence during cross-examination, stating that the sacks were made as samples, was an afterthought since it was not mentioned in his witness statement. The Plaintiff reiterated that Mr. Mark Sinyangwe had confirmed the manufacturing of bags when he stated that they called the gentleman to collect the sacks. 6 . 14 Furthermore, the Plaintiff considered it an admission by the Defendant when Mr. Sinyangwe testified in his evidence-in chief that they used orders refused by the Plaintiff to make sacks to satisfy the gentleman who r equested Neelkanth branded sacks. J20 6.15 The Plaintiff further noted the contradiction in the defence, where the Defendant averred that the Plaintiff had made an order for the sacks. This averment was not supported by evidence. The defence evidence indicated that it was the gentleman who made the order, not the Plaintiff. It was further pointed out that the infringed sacks were found at the Defendant's premises a year after the Defendant pitched the business idea at the Plaintiff. 6.16 The Defendant failed to rebut the Plaintiffs evidence that it was discovered a year after pitching that the Defendant had been making bags without the Plaintiffs consent or authorization. The Plaintiff formed the view that the Defendant's witness contradicted himself in many aspects, thereby putting his demeanor in question. 6.17 The Plaintiff quoted the learned authors of Kerly's Law of Trade Marks and Trade Names on what constitutes infringement and the general conditions of infringement founded in statutes. 6.18 The Plaintiff concluded by asserting that the Plaintiff has proved its case on the balance of probabilities and that the reliefs sought should be granted. What was denied in the defence was, however, proved at trial. 7. The Defendant's Final Submissions. 7.1 The submissions are dated the 15th July, 2024. J21 7 .2 The gist of the submissions is that the Plaintiff has failed to prove its case to the requisite standard of proof. The provisions of section 9 of the Trade Marks Act and the learned authors of Kerly's Law of Trade Marks and Trade Names were cited on the elements that need to be proved in an action for infringement of a trade mark. 7 .3 It was submitted that the evidence of Mr. Anil Soni, the first witness for the Plaintiff to the effect that he was told by Mr. Sinyangwe that the Defendant has been manufacturing bags and he suspected and believed they were the ones at Kasumbalesa was speculative. That equally the Plaintiffs submissions that the bags that were found at Kasumbalesa with unknown substance, were manufactured by the Defendant was premised on speculative evidence. It was contended that the Plaintiffs evidence was challenged during cross examination. Consequently Mr. Soni admitted that the people that were found at Kasumbalesa were not employees of the Defendant. 7.4 As regards the delivery note which Mr. Soni relied upon to prove use and sale of Neelkanth products, it was argued that the same did not relate to the infringed 25 kg bags. That the description on the delivery note was for 50 kgs bags and its evidential weight to prove infringement was rebutted. 7.5 It was further submitted that the evidence of Mr. Mark Sinyangwe was unshaken during cross examination. That J22 he explained clearly that the Defendant was given an order for a sample and went on to produce 100 bags as the machine could not produce one bag. 7 .6 It was contended that based on the foregoing, the Defendant had proved that the production of the bags was with the permission and authority from the Plaintiff. 7. 7 It was therefore argued that production of the sacks on behalf of someone cannot amount to use in the context of section 9 of the Trade Marks Act. This was on account that when the sacks are produced by the Defendant for the Plaintiff, it is in fact the Plaintiff who is using the trade mark. 7.8 The other aspect of the submission was that finding sacks at the Defendants factory was on its own insufficient to prove infringement. 7.9 This was b ecause the sacks were manufactured with the consent of the Plaintiff. That the Plaintiff admitted that they consented to production of sample bags. 7 .10 The second argument was that mere possession does not amount to use for purposes of trade mark infringement. The learned author of Kerly's Law of Trade Marks and Trade Names was relied upon in support of the argument. The authors posit as follows:- "It would appear that mere possession of goods bearing an offending sign is not an infringement, unless there is an intention to deal in them". J23 7. 11 It was contended that there was no evidence to show any_ intention of the Defendant to produce bags without an order from the Plaintiff. The lack of intention was supported by the undisputed evidence that it was actually the Defendant who caught the person who wanted to infringe the Plaintiff's trade mark. The Defendant requested the Plaintiff to confirm the Order and when they did not, they lured the culprit on the pretext that the bags were produced and he should return to collect them. That when this person went to collect the sacks, the Plaintiff was called and they went to the Police and captured this person. 7 .12 It was reiterated that there were no bags that were produced as Mr. Sinyangwe made it clear the aim of selling this person was to lure him. It was further explained that it was not surprising that this stranger went to the Defendant to ask for the manufacture of sacks bearing the Neelkanth logo because the Defendant was in the business of producing sacks. 7.13 It was the Defendant's submission that it would not have ,9 offered to assist the Plaintiff to find the persons who were infringing their products if they were also infringing. That it beats logic that the Defendant would call the Plaintiff to their premises to come and apprehend the infringer if they were infringing the Plaintiff's trade mark. The Defendant concluded by stating that the Plaintiff has failed to show J24 that there was ever any use of the trade mark without the consent of the proprietor. 7.14 The second limb of the submission was that the second element of trade mark infringement, which is, use without consent in the course of trade had not been proved. 7 .15 The learned authors of Kerly's Law of Trade Marks and Trade Names and the case of L'oreal SA vs. Bay International121 were cited on what constitutes use in the course of trade. The gist being that the proprietor of a trade mark will be entitled to prevent third parties from using a similar trade mark, if the use is in the course of trade, which means engaging in commercial activities. 7.16 It was argued that in casu, there is no evidence to prove that the Defendant has used the trade mark of the Plaintiff in the course of trade. This argument was hinged on three grounds, firstly, that there was no connection between the man who was found selling Neelkanth Lime sacks at Kasumbalesa with the Defendant, the sample sacks being the Plaintiff's trade mark found at the Defendant's factory does not amount to use in the course of trade, and lastly, there was no evidence that the Defendant had supplied or sold any of the sacks bearing the Plaintiff's trade mark. 7 . 17 The Defendant contended that there were attempts by the Plaintiffs Counsel to inflate the number of sacks that were actually found at the factory. It was submitted that such attempts were not supported by evidence and have been J25 frowned upon by the Courts. The case of Zambia Revenue Authority vs. Hitech Trading Company13 l was cited. 7 . 18 It was submitted that as the Plaintiff has not discharged its burden of proof to the required standard of proof, the claims should be dismissed. The cases of Khalid Mohammed vs. The Attorney Genera}l4l,Phillip Mhango vs. Dorothy Ngulube and Others15l, Hite ch Logistics Limited vs. Ugondo Italian Style Limitedl6 l and Miller vs. Minister of Pensions17l, were quoted on burden of proof and standard of proof. The gist being that he who alleges must prove the allegations on the balance of probabilities. 7.19 It was submitted that in this case, the burden 1s on the Plaintiff to prove the claims pleaded on the preponderance of probabilities. It was pointed out that what the Plaintiff constantly stated as facts not rebutted, was actually challenged in cross examination. 7.20 It was however contended that the issue was not of rebuttal or otherwise but whether or not the evidence adduced proves the Plaintiff's case on the balance of probability. It was submitted that the Plaintiffs claim of USD 1,000,000 for breach of contract was not proved and is unfounded. 7 .21 The Defendant urged the Court to dismiss the Plaintiffs claim for lack of merit with costs. J26 8. Consideration and Determination 8.1 I have considered all the evidence and submissions from both parties. 8.2 It is undisputed that this is a trade mark infringement action. The Plaintiff seeks to enforce its exclusive rights to the Neelkanth hydrated Lime trade mark. To succeed in its claim, the Plaintiff must prove three elements of trade mark infringement: valid ownership of the trademark, use by the Defendant in the course of trade without consent, and likelihood of public confusion. 8.3 These three elements of infringement can be deciphered from Section 9 (1) of the Trade Marks Act, which states- "9 ( 1) Subject to the provisions of this section and sections twelve and thirteen, the registration of a person in Part A of the register as proprietor of a trade mark in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using to way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either - J27 a) as being used as a trade mark; or b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as referring - i) to some person having the right either as proprietor or as registered user to use the trade mark; or ii) to goods with which such a person as aforesaid is connected in the course of trade." 8.4 Arising from the foregoing, the issues for determination are as follows : i) Whether the Plaintiff owns a valid and registered trade mark. ii) Whether the Defendant used the same or a similar trade mark in commerce or course of trade without the Plaintiff's consent. iii) Whether the Defendant's use of the trade mark caused a likelihood of confusion in relation to any of the goods for which it is registered. iv) Whether the Plaintiff is entitled to the reliefs it seeks. 8.5 The issue of whether the Plaintiff has a valid and registered trade mark is not in dispute. The Plaintiff has produced two Certificates of Registration of trade mark and two Certificates of Payment of Renewal Fee from PACRA in its bundle of documents. J28 8. 6 According to the first Certificate of Registration of Trademark, which is relevant to this case, the Neelkanth Hydrated Lime trade mark is registered in Part A of the Register, in the name of the Plaintiff, in Class 16 under No. 966/2012 as of August 9, 2012, 1n respect of stationery /printed matter. The effective date of the trademark is August 9 , 2012. 8. 7 The second certificate of registration of trade mark shows that the Neelkanth Hydrated Lime trade mark is registered in Part A of the Register, in the name of the Plain tiff, 1n Class 1 under No. 965/2012 as of August 9 , 2012, 1n respect of chemicals used in industry, science, and photography, as well as in agriculture. 8.8 A note at the bottom of both certificates indicates that the registration is valid for 7 years and may then be renewed for an additional 14 years. This is in accordance with section 25 of the Trade Marks Act, which outlines the duration and renewal process for trade mark registration. 8.9 Accordingly, the two Certificates of Payment of Renewal Fee show that the registration for the Neelkanth Lime Trade mark was renewed for a period of 14 years, effective from August 9 , 2019. 8 . 10 Based on the evidence provided, I am satisfied that the Neelkanth Hydrated Lime Trademark is a valid and duly registered trade mark owned by the Plaintiff. J29 8 . 11 Under section 9 of the Trade Marks Act, this registration grants the Plaintiff exclusive rights to use the trade mark in connection with the goods for which it is registered. As the registered owner, the Plaintiff has the right to enforce the statutory rights associated with the trademark. 8.12 The conclusion on the first issue is that the Plaintiff is the registered owner of the trademark in question, and that trademark is valid. 8 .13 I observe that the Plaintiff had claimed in the pleadings that the Neelkanth Lime Logo, which was allegedly used and manufactured by the Defendant on 25kg bags, was a patent duly registered by the Plaintiff. This claim has not been substantiated with any evidence, and the Plaintiff has since acknowledged that the logo in question is a trade mark, not a patent. Therefore, the initial assertion was misleading. 8.14 The second issue to determine is whether the Defendant used the Neelkanth Hydrated Lime trade mark in trade or commerce without the Plaintiff's consent. 8.15 According to section 9 of the Trade Marks Act, trade mark infringement occurs in the following instances: i) When an individual who is not the proprietor uses a registered trade mark on the same goods for which the trade mark is registered, known as primary infringement; ii) When an individual who is not the proprietor uses a similar or resembling mark concerning the same goods, J30 creating a likelihood of public confusion, known as secondary infringement. 8 .16 Both parties have cited Kerly's Law of Trade Marks and Trade Names regarding the general conditions of infringement as specified in statutory requirements. These conditions include: the use of a sign without the proprietor's consent; use in the course of trade (as opposed to private use); use in relation to goods or services; and use that could affect the functions of trade marks. These conditions clearly align with the statutory provisions on infringement outlined in section 9 of the Trade Marks Act. 8.17 The Plaintiff contends that the Defendant used the Neelkanth Hydrated Lime trade mark without the Plaintiff's consent. 8.18 The first instance upon which the Plaintiff bases its claim of unauthorized use of its trade mark by the Defendant involves the discovery of 25 kg bags of waste lime at the Kasumbalesa border in May 2021. These bags were labeled with the Neelkanth Hydrated Lime trade mark, which belongs to the Plaintiff. 8 .19 The Plaintiff has attributed the infringing bags to the Defendant, claiming they violate the Plaintiffs trade mark. In contrast, the Defendant has disputed any knowledge of these infringing bags and denied any involvement with them. J31 8.20 During cross-examination, Mr. Soni, the Plaintiff's first witness, stated that no employee of the Defendant was found selling the infringing bags at Kasumbalesa. Mr. Soni also testified that efforts to identify the individual responsible for the consignment of the infringing bags at Kasumbalesa were unsuccessful. 8.21 The Plaintiff further submitted that the Defendant did not rebut the averment in the statement of claim that the Defendant were since May, 2021 infringing on the Plaintiffs registered trade mark by using it in the course of trade in Zambia. This submission is contrary to the evidence. As illustrated above, the Defendant questioned Mr. Soni concerning the infringed bags that were found at Kasumbalesa in May, 2021 and he failed to link the Defendant to the infringed bags. 8.22 I am therefore unable to find as a fact that the infringed bags that were found at Kasumbalesa in May, 2021, were manufactured by the Defendant. Conversely the use of the Plaintiffs trademark by the Defendant with regard to this incident has not been proved. 8.23 The next incident culminating 1n claims of infringement emanate from the undisputed visit that Mr. Mark Sinyangwe and his Team from the Defendant Companymade to the Plaintiff's Plant in March, 2022 . 8. 24 The purpose of the visit according to Mr. Soni was to collect a previously placed order for one ton of hydrated lime and a J32 25kg empty bag branded as Neelkanthhydrated lime. Mr. Sinyangwe's evidence on the other hand was that they went to the Plaintiffs factory to pitch for business and particularly 25kg, 50kg and 1 ton sacks. 8.25 I have considered the two versions fronted by the parties. I note that when Mr. Soni was cross examined concerning the visit, he admitted that Mr. Sinyangwe and his team approached the Plaintiff to discuss business, particularly because they intended to manufacture the Plaintiffs bags. 8 .26 I am therefore satisfied based on the foregoing that the reason why Mr. Mark Sinyangwe and his Team visited the Plaintiffs Plant was to pitch for business. The Defendant targeted the Plaintiff because it produces lime which 1s packed in sacks and as such a potential customer. 8.27 According to Mr. Soni, it was during this pitching event that he learnt that the Defendant were infact already producing the Plaintiffs branded bags. Mr. Soni further stated that Mr. Mark Sinyangwe showed him sample bags which the Defendant was producing. This evidence is to some extent consistent with that of Mr. Mark Sinyangwe who testified that as p er standard procedure, the Defendant provided sample sacks during the pitching exercise. 8 .28 My view therefore is that the Plaintiff had authorized the Defendant to provide sample bags after the pitching exercise so that they could be assessed as to quality. Mr. Soni's claim that during the factory visit, he discovered that the J33 Defendant had been manufacturing bags for hydrated lime labeled with Neelkanth Hydrated Trade Mark is not sufficient in my view to prove that the Defendant were using the trade mark in the course of trade. I am further of the view that the Plaintiffs evidence that the Defendant supplied Neelkanth Hydrated Lime branded bags to a Mr. Ndalama of Congolese origin was not supported by evidence and as such it cannot be sustained. 8.29 The last occurrence upon which the Plaintiff's claims for infringement pertain to what transpired at the defendant's factory subsequent to the pitching event. 8.30 It is not in dispute that Mr. Mark Sinyangwe had contacted the Plaintiff concerning a person who had approached the Defendant and wanted sacks bearing the Plaintiffs trade mark. Mr. Sinyangwe clearly collaborated with the Plaintiffon the issue and ensured that this person was apprehended. This is confirmed by Detective Ngulube , the second witness for the Plaintiff who testified that the gentleman was found at the Defendant's premises because the Defendant had kept him there. 8. 31 This person who was apprehended was not an employee of the Defendant and was released under unclear circumstances. This gives credence to the Defendant's story that it acted in good faith to ensure that any person using the Plaintiffs trade mark was apprehended. J34 8.32 It must be noted that Detective Ngulube's evidence that he stormed the Defendant's factory in pursuance of his investigations is misleading. The correct narrative is that the Officer went to the Defendant's Plant after the Defendant alerted the Plaintiff that the gentleman who had wanted Neelkanth bags was at the Plant. 8.33 The contentious issue however is whether when Sergeant Ngulube and other officers raided the Defendant's Plant they found numerous bags with the Plaintiff's trade mark at the premises. Mr. Mark Sinyangwe conceded that when the Police visited the Defendant's premises, they found sacks with the Plaintiffs logo. He however explained that these sacks were sample bags that were made at the order of the Plaintiff. 8.34 I have considered this contending evidence as regards the quantity of bags that were found at the defendant's premises. In the absence of the actual bags that were found and could have been recovered by the police and or pictures taken to show the quantity, I am inclined to accept the Defendant's version that these sacks were part of the sample bags that were made in the course of pitching for business by the Defendant. 8.35 Further, the fact that the Defendant notified the Plaintiff about this person who had placed an order of sacks bearing the Plaintiff's logo, gives credibility to the Defendant's narrative. I am, therefore, unable to find as a fact that the J35 Defendant was manufacturing sacks bearing the Plaintiff's logo. 8.36 The other issue of contention relates the delivery note that the Plaintiff claimed was received from Mr. Mark Sinyangwe. According to Mr. Soni, this Delivery Note was for the supply of bags branded with the Neelkanth Hydrated Lime logo by the Defendant and was not authorized by the Plaintiff. It should be noted that whilst stating the Mr. Mark Sinyangwe gave him the delivery note, Mr. Soni did not state why he was given the said document. 8.37 Secondly, the Delivery note shown in the Plaintiff's supplementary bundle of documents has no name and it is not signed. The document as was established during the cross examination of Mr. Soni pertains to 50 kgs ultra lime bags. There is, therefore, no reference to Neelkanth Hydrated Lime on the Delivery Note which fact was admitted by Mr. Soni. 8.38 My review of the Delivery Note is that it is insufficient to establish as a fact that the Defendant was manufacturing, supplying and or selling bags bearing the Plaintiff's trade mark. 8.39 The last element of trade mark infringement that the Plaintiff must prove is that the use of the trade mark caused a likelihood of confusion in members of the public. Having answered the second element in the negativeand specifically that there was no use of the Plaintiff's trade J36 :::: mark in the course of trade by the Defendant, consideration of this third element has been rendered otiose. In any case the issue of likelihood of confusion does not arise in respect of primary infringement because identical marks (used on identical goods or services) are inherently confusing. 8.40 The last consideration is whether or not the Plaintiff should be awarded the reliefs that it seeks. These include a permanent injunction, damages for infringement, damages for breach of contract, damages for reputation injury and loss of good will. The award of these reliefs was dependant on the Plaintiff proving its claim for trade mark infringement. Having failed to do so, I find no basis upon which the award of these reliefs can be premised. The Plaintiff is, therefore, not entitled to the awards that it seeks. 9. Conclusion. 9 . 1 The Plaintiff has failed to prove, on the balance of probabilities, that the Defendant used its registered trade mark on the same goods for which the trademark is registered. 9.2 The manufacturing of sample bags by the Defendant cannot be considered as use of the trade mark in commerce or in the course of trade. J37 9 .3 The Plaintiff's failure to prove the substantive claim of trade mark infringement means that all other claims listed in the writ of summons have also failed. 9.4 Consequently, the Plaintiff's entire claim is dismissed, with costs to be taxed in default of agreement. Dated at Lusaka this 2 nd day of August 2024 . ................. . : .......... . Chilombo Bridget Maka HIGH COURT JUDGE J38