Court name
Court of Appeal of Tanzania
Case number
Commercial Case 11 of 2005

Tanzania Cigarett Company Ltd vs Mastermind Tobacco (Commercial Case 11 of 2005) [2005] TZCA 85 (28 November 2005);

Media neutral citation
[2005] TZCA 85










IN
THE HIGH COURT OF TANZANIA (COMMERCIAL DIVISION) AT DAR ES SALAAM

COMMERCIAL
CASE
NO.
11 OF 2005

TANZANIA
CIGARETTE COMPANY LIMITED PLAINTIFF

VERSUS

MASTERMIND
TOBACCO (T) LIMITED DEFENDANT

JUDGMENT

MASSATI,
J:

Date
of last

Submission - 17/10/2005

Date
of
Judgment-28/11/2005

At
the behest of the Plaintiffs, MS TANZANIA CIGARETT COMPANY LTD, MS
MARANDO, MNYELE & CO. ADVOCATES fi' a suit in this Court against
the Defendants MS MASTERMIND TOBACCO (T) LIMITED for the following
reliefs:

(a
)A perpetual injunction restraining the Defendants acting by their
directors, officers servants or age otherwise howsoever from
infringing registered trac 30524 Safari Graphics.

  1. The
    Defendants be ordered to deliver all the manufactured and or
    imported cigarettes infringing the trade mark for destruction.

  2. General
    damages and any other relief that the Honourable Court may deem it
    fit to grant.

(d) Costs
of this suit.

The
plaint was filed on 18/2/2005.

The
Defendant instructed M/S MKONO & CO, ADVOCATES who prepared and
filed a Written Statement of Defence in which they pray for the
dismissal of the suit. The Defendant also proceeded to file a
Counterclaim for the following reliefs:

(a)
An injunction restraining the Plaintiff/(Defendant), whether by
itself or its officers, servants, or agents or any of them or
otherwise, from manufacturing, importing, selling or offering or
exposing or advertising for sale or procuring to be sold or passing
cigarettes and tobacco products not of the Plaintiff/(Defendant) 's
manufacture or merchandise in packaging, labeling or other appearance
which by reason of colorable or other resemblance to the Plaintiff
(Defendants) packaging or otherwise, leads to belief that such goods
are of-the Plaintiff (Defendant).

(b)
An order declaring that only the Plaintiff (Defendant) is the
proprietor of and is entitled to use or authorize other persons to
use the trade or business name MASTER in any form in Tanzania and
that the acts of the defendant (plaintiff) of attempting to
appropriate and register the Plaintiff (Defendant) Corporate name
and trade mark MASTER in its name is unconscionable, undesirable and
contrary to law and morality.

  1. The
    Defendant (Plaintiff) be condemned to pay general damages and costs
    of this counterclaim, and as the Honourable Court may determine.

  2. Any
    other or alternative relief that this Honourable Court may deem
    just to grant.

In
a simple language, the parties' claims against each other are for
infringement of trade marks and passing off and unfair competition.
For the purposes of this judgment, I will retain the description of
Plaintiff and Defendant when dealing with the suit, and the parties
in the counterclaim shall be baptized as
"MASTERMIND"
and
"TCC"
for
the Counterclaimant and the counter defendant respectively.

At
the beginning of the trial the following issues were framed for the
suit, and the counterclaim respectively.

FOR
THE SUIT
:

1.
Whether the Defendant has infringed the Plaintiffs trade mark?

  1. Whether
    the Plaintiff registered trademark SAFARI graphic
    fraudulently?

  2. Whether
    the Defendant has prior rights over MASTER trademark by virtue of
    making the application first?

  3. Whether
    the Defendant has extensively marketed the MASTER brand cigarette
    so as to make it well known?

  1. Whether
    the trade mark SAFARI was changed by the Plaintiff so as to
    resemble the trade mark MASTER?

  2. To
    what reliefs are the parties entitled?

ON
THE COUNTERCLAIM
:

  1. Whether
    TCC has passed off MASTERMIND'S
    "MASTER"
    cigarettes
    by manufacturing SAFARI cigarettes?

  2. Whether
    MASTERMIND has exclusive rights in
    "MASTER"
    trade
    mark?

  3. Whether
    MASTERMIND has goodwill in the trade mark
    'MASTER
    "
    to
    protect?

4.
Whether
TCC has engaged in unfair competition against
MASTERMIND?

5.
To what reliefs are the parties entitled?

The
parties lined up several witnesses to prove their respective cases.
The Plaintiffs case was conducted by Mr. Mnyele, learned Counsel,
whereas Ms Kasonda, learned Counsel assisted by Ms. Gogadi led the
defence case.

The
Plaintiffs case was built by 7 witnesses. PW1 LUCY MANDARA the
Plaintiffs Legal Affairs Manager testified as to how she was
involved in the registration of the SAFARI trade mark. She said that
SAFARI KING SIZE FILTER trade mark is registered in the name of the
Plaintiff. She said she applied for its registration on 6/9/2004. To
illustrate it she tendered Exh.PI collectively. The Registrar of
Trade Marks accepted the applications by his letter dated 17/9/2004.
She tendered the letter of acceptance as Exh.P2. She went on to say
that the Plaintiff paid application and advertisement fee, and for
that she tendered the ERV receipt No. 21206458 of 20/9/2004 as
Exh.P3.

The
trade mark was then advertised in the Tanzania Patents Trade and
Services Marks Journal of 15/11/2004, which she admitted as Exh.P4.
She went on to tell the Court that after advertisement and after 60
days had gone without notice of opposition, she went ahead and filed
Form TM 8 which she tendered as exhibit P5 and paid 60,000/= as
registration fee. Thereafter the Registrar issued a certificate of
registration for SAFARI trade mark. The said certificate was
tendered as Exh.P6. The trade mark certificate was No. 30524 and was
effective 6/9/2004.

The
witness was then led as to her knowledge and experience in the trade
marks registration laws and regulations. When shown a letter from
MKONO & CO, Advocates dated 13/1/2005 asking for extension of
time within which to file a notice of opposition PW1 opined that
there was no such provision in law.

PW1
further said the MASTER trade mark which she helped register did
not imitate the Master trade mark of the Defendant because
simultaneously with the application for their SAFARI she had also
applied for registration of MASTER trademark on 6/9/2004.
However its registration was refused by the Registrar by his letter
of 26/10/2004. PW1 then admitted a number of registration
certificates for other brands of SAFARI cigarettes as Exh.P7
collectively Exhibit
P1
she went on, was associated to but not the same as Exh.P6. She said
the Defendant infringed the SAFARI trade mark by manufacturing
MASTER cigarettes with a trade mark that was deceptively and
confusingly similar to SAFARI trade mark No. 30524. And she
identified the trade mark in question (a label of SAFARI trade mark)
and tendered it as Exh.P8. PW1 produced a total of 6 packets (3 for
Safari Menthol and 3 (Safari King Size filter) as Exh.P9
collectively.

PW1
was also shown and asked to. compare the Master labels (which she
tendered as Exh.P10 and 6 packets of Master cigarettes (3 of Master
Filter, and 3 of Master Lighter which she admitted as
Exh.Pll.
She said Exh.P9 and
Pll
are confusingly similar, in that_in both SAFARI and MASTER Light,
there are circles in the middle, and the words SAFARI and MASTER are
similarly composed and positioned. She said the coloring of

blue labels was also similar, so was the dress. She said the
similarities are confusing.

PW1
went on to testify that their Company became aware of the
infringement in early February 2005; and proceeded to instruct
Counsel to institute the suit which was filed on 13/2/2005. She thus
refuted the Defendant's claim that the Plaintiff acquiesced to the
infringement. She said the grant for refusal of registering MASTER
trade mark was because it was similar to QTM Noo. 001686. On
following up the refusal through the Trade Mark and Service Journals
she came across an advertisement of the Master label by the
Defendant in the 15/3/2005 journal (Exh.P12). The Defendant's
application was No. 001686 and filed by Mkono & Co. Advocates.
PW1 said on seeing this she immediately instructed their lawyer to
oppose the application. She tendered the instructing letter as
Exh.P13.

She
went on to tell the Court that the objection was filed through Form
TM 5 which she tendered as Exh.P14. it was received by the Registrar
and duly paid for vide ERV No. 23376162 which she tendered as
Exh.P15. She said since the 60 days lapsed on 14/5/2005 and their
objection was filed on 4/5/2005 it was filed within time. She said
according to law, the Registrar could not proceed to register the
trade mark after receiving the notice of opposition and not until
after the disposal of the opposition.

She
said, however, in the present case even after registering the notice
of opposition, the MASTER-trade-mark was registered all the same
although their lawyers Marando, Mnyele & Co. had written asking
the Registrar to recall the certificate of registration. She
tendered the letter of the Registrar

as Exh.P16. So, she wound up her testimony by opining that to her,
the certificate of Registration of MASTER trademark was issued ultra
vires the law. She prayed for judgment in favour of the Plaintiff
and dismissal of the counterclaim with costs.

On
cross examination by Ms KASONDA, learned Counsel PW1 said her duty
was not to design logos, but boasted of her knowledge in trade marks
and services regulations. She admitted that under Regulation 84 of
the Trade and Service Marks Regulations Rules GN 240/2000, the
Registrar has powers to extend time.

She
said she filed an application for registration of the Master trade
mark as instructed, and that the application was refused because
another application for a similar trade mark was pending. She said
to her knowledge QTM was just an application number and that the
Registrar has the right to refuse or accept to register.

She
said, SAFARI cigarettes are not in the market yet but that in
paragraph 6 of the plaint, she was only referring to a few
cigarettes produced as surplus on trial basis. At the moment these
cigarettes were only within the company premises, but feared that
come the market trial period, confusion between the two brands of
cigarettes would reign. She said SAFARI cigarettes were produced in
late January 2005. She said she was not aware whether the notice of
opposition had been served on the other party. She said in her view,
until such time that the Registrar gives
a
decision
on the opposition, the registration remains valid in law.

Re
examined, PW1 said, according to the Trade Marks and Service Act,
opposition has to be filed within 60 days. She was not aware whether
the Defendant has applied for extension of time or whether the
Registrar has granted that extension as there are no proceedings yet
on the matter. She said according to the Regulations the Registrar
is charged with the duty of serving the other party and that she has
never been summoned for a hearing of the opposition.

PW2
STELLA URIO told the Court that she was the Plaintiffs brand
Manager, in the Marketing Department. She said she manages the
SAFARI Sweet Menthol, Club, and Winston. She said she holds a B Sc.
(Economics) of the University of Wisconsin, USA, and also an M.A. in
Organizational Behavior Specialty in International Business and
Marketing; and that she joined the Plaintiff Company in 1999. She
said she was responsible for all the brands that she manages from
strategic plans, annual plans, budgets and market research.

She
went on to tell the Court she was fully conversant with the SAFARI
brand. They are manufactured by the Plaintiff Company. She has also
heard about the MASTER cigarettes which are manufactured by the
Defendant Company.

She
said she was involved in the invention and design of the SAFARI
brand although the trade mark itself was not new to the Plaintiff
Company. She said their intention was to launch another brand in
the
segments
and decided to start with SAFARI taking into account the value of
the segment, the targeted smokers and distributors. She said
consumers are mostly attracted by colours and shapes, and they use
these factors in effective brand marketing. She said the invention
of the SAFARI mark to indicate either sunrise or sunset was meant
for smokers at these times.

The
witness was then asked to compare (Exh.P9) Safari cigarettes, and
(Exh.Pll) MASTER cigarettes. She said that a close look at the
SAFARI and MASTER brands show a striking resemblance and might
register, a confusingly similar impression on the consumers' minds.
She said the basis of her opinion was that from a distance, the
colours the shapes and the positioning of the Defendant elements in
the packets are the same. So the consumer might think they are the
same if placed in the same shelves. She said, just like SAFARI the
idea behind MASTER was also to depict the rising or setting sun on a
dark blue background, so that, in effect they represent one and the
same thing.

PW2
said they conduct regular formal and informal market surveys in
order to keep abreast with market trends and improve their products
and marketing. She said in the case of such routine surveys in
February 2005 they received information that MASTER cigarette have
been introduced in the market. This was later confirmed through
several newspapers. She tendered cuttings of the Daily News of
22/3/2005, Mtanzania of 22/3/2005 Tanzania Daima of 22/3/2005, the
Guardian of 18/3/2005, and the Citizen of 22/3/2005 on Exhibits P.
17, PI8, PI9, P20 and P21 respectively.

She
said in marketing terms a goodwill refers to a brand value. It is
the value of the brand in the consumers' mind. She said goodwill is
acquired over time, usually between 10, 15 or 20 years during which
the product is to be produced consistently in terms of quality
availability and what it stands for.

She
said in the present case the MASTER cigarettes were introduced in
early February 2005 whereas the counterclaim was filed on 10/3/2005.
Any known brand needs at least 15 years to acquire brand value or
brand equity. So she said in this case since the counterclaim was
filed before the launching of the Defendant's production, the MASTER
cannot be said to have acquired any goodwill.

PW2
went on to tell the Court that the Plaintiffs market is countrywide
with consumers from all social and economic levels. She said in her
view to the illiterate and semiliterate consumers the level of
confusion between the two brands (i.e SAFARI and MASTER) would be
very high in view of the similarity in the graphics and colours of
the two brands.

And
consumers are not likely to identify who manufactured which brand.

She
said since they have not started full scale manufacturing of SAFARI
brand so they cannot be said to have been selling them. And since
the Plaintiff has both a strong credibility and services, and
excellent net working, putting a similar product would in fact
benefit the new comer taking advantage of the Plaintiffs 30 years
goodwill. This is more so because PW1 said their products were of a
higher quality than those of MASTERMIND. She said the Defendant's
products are poor, without straight lines, and so cannot stand
straight. The cigarettes are poorly wrapped. On the other hand the
Plaintiffs cigarettes were of high quality, good quality packets,
constant in shape and no loose tobacco between the cellophane and
the packets. She therefore wound up her testimony by disputing that
the Plaintiffs SAFARI were spurious or inferior in quality.

Cross
examined by Ms Kasonda learned Counsel, PW2 told the Court that the
SAFARI design was adopted from Kenya, but in Tanzania it belongs to
the Plaintiff, having adopted it in the earlier part of 2004. She
said the Master brand was from their marketing department. She said
although she knew MASTERMIND TOBACCO (T) Ltd after it had started
operations she was not aware of the MASTER brand. She said she was
aware of other competitors such as BAT, Hedges, Mastermind and
Iringa Tobacco Company Ltd, and took it to be healthy. She said on
the similarity of brands the consumers would be the best judges. If
the similarity is confusing or not she said their products entered
the market in January 2005 but the Master products jotted in
February 2005.

Re
examined by the learned Counsel for the Plaintiff PW2 said
"MASTER"
and
"MASTERMIND"
were
two different things with different meanings.

The
next witness for the Plaintiff was SIMON MASELE who featured as PW3.
He introduced himself as the branch Supervisor in the Plaintiffs
sales department. He said his duty was to prepare for sales for Dar
es Salaam branch, receive feedback from the market and prepare
reports and has worked in that capacity for 6 years.

PW3
told the Court that he first heard of the Master cigarette in early
February 2005. he said he first received a call from one of their
customers one GASPER MAZIWA, trading as BAHATI COLD DRINKS, who told
him some people had approached him to introduce the new brand. He
said the customer identified the salesmen as a former staff of the
Plaintiff Company.

He
told the Court that he was also aware of SAFARI Cigarette
manufactured by the Plaintiff but they are not yet in the market.

He
said on 28 - 29/7/2005, he conducted some survey on the two
cigarettes, SAFARI and MASTER. He produced a bundle of
questionnaires as Exh.P22. He said the purpose of the survey was,
first to establish to what extent the Master cigarettes were known,
second, to see the simulation between MASTER and SAFARI, and thirdly
to see if the two brands could confuse and deceive customers. He
said by using Samples of MASTER and SAFARI Cigarettes he visited
various parts of the city. They were MASTER filter and SAFARI
filter and menthol. The areas he visited include, Kariakoo,
Tandale, Mwenge and Sinza, and interviewed a total of 15 persons. He
then made an analysis of the survey. He said of the people
interviewed, about the Master cigarettes, 8 denied having even heard
of it, while 6 admitted knowing it. He also concluded that all 15
persons admitted having been deceived by the samples of
"MASTER"
Cigarettes
("A"
&
"B")
while
all admitted that the two brands of cigarettes resembled. He
therefore concluded that SAFARI and MASTER cigarettes were
confusingly and deceptively similar.

Cress
examined by Ms. Kasonda, PW3 admitted that he prepared and marked
the questionnaires himself. He said he indicated the names and
places of the interviewes. He denied having interviewed
"imaginary
persons ".

In
re examination, PW3 told the Court that in such surveys it was not
necessary for the interviewees to sign because it was merely meant
to be for fact finding.

He
said physical addresses were sufficient so that the interviewees
could be traced back.

To
illustrate what PW3 had just said the Plaintiff summoned
GASPER
STEPHEN MARIWA,

PW4,
MODEST
MUNISHI
,
(PW5)
ABUBAKARI
SHABANI

(PW6
and
GODWIN
KONDA

(PW7),
PW4 testified that one CHOMBA an ex staff of the Plaintiff Company
had brought to him samples of the Master cigarettes. After that he
phoned to inform PW3. Asked to compare Exh.P9 and P11, PW4 said
they looked similar, and that it was possible for customers to
confuse them if put together in

a
shelf. He said normally customer do not look at labels. In cross
examination PW4 said he first came to know MASTER Cigarettes in
February 2005. He said as they were not yet popular, they were
slow moving. He said he had been selling SAFARI brands sometime
before but had not yet started selling the current SAFARI brand. He
said, CHOMBA who was an ex staff of the ~ Plaintiff Company never
told him the manufactures of MASTER Cigarettes. On re examination
PW4 told the Court that the new SAFARI Cigarettes were brought to
him as samples by PW3 a few weeks ago.

PW5,
MODES
MUNISHI

said he does business at Sinza, in the trade name of AFRICA SANA
Corner Bar. He said he knew and identified PW3 as the one who
visited him about a month ago. He said it was PW3 who showed him
MASTER Cigarettes for the first time. He also showed him SAFARI
Cigarettes, and asked him some questions from a questionnaire. He
identified the questionaire with his name (Exh.P22) and said he
agreed with the answers that had been ticked in the said Exhibit.
Cross examined, PW5, admitted both brands of cigarettes were brought
to him for the first time by PW3.

ABUBAKAR
SHABAN

(PW6) testified that he runs a shop called JUST IMAGINE CORNER SHOP,
at AFRICA SANA, Sinza. He said PW3 visited his shop some two weeks
before with samples of SAFARI and MASTER Cigarettes, and asked him
several questions. He said that in answer to a question put by PW3
he told him that the two brands of cigarettes did not resemble. He
identified from Exh.P22, one questionaire as his own and associated
himself with the answers to the questions therein shown.

And
lastly
PW7
GODWIN
KONDA

testified that he did his business at Mwenge. He told the Court that
PW3 had gone to his shop two weeks before, holding two brands of
cigarettes, namely
MASTER
and
SAFARI
and
asked him to compare them. He identified one questionnaire from
Exh.P22 as his own and associated himself with the answers therein.
Cross examined by Ms. Kasonda, PW7 said he had heard of but not seen
the MASTER cigarettes before, nor the SAFARI cigarettes. He said he
could identify the two brands because he sells them in his shop.

With
this the learned Counsel for the Plaintiff closed the Plaintiffs
case. The Defendant then took the turn to give her evidence. As
hinted above in revisiting the Defendant's evidence, I will refer to
the parties as MASTERMIND and TCC respectively.

MASTERMIND
began their case with the evidence of JARVIS KALANGU testifying as
DW1.

DW1
introduced himself as the Marketing Manager of MASTERMIND TOBACCO
(T) LTD, which was established in 1996. He said his Company produces
4 brands of cigarettes. He named them as MASTER FILTER, MASTER
MENTHOL, MASTER LIGHT and ROCKET. He said while TCC was suing them
for infringement MASTER MIND is suing TCC for passing off their
MASTER product, as theirs.

He
said MASTER is owned by MASTERMIND TOBACCO (T) LTD because he was
privy to and participated in registering it. He said, their
application was filed on 22/6/2005 through their lawyers. He
identified the application form and tendered it as Exh.Dl. He also
tendered the accompanying letter from Mkono & Co. Advocates to
the Registrar of Trade Marks and Services as Exh.D2. The receipt ERV
21200102 of 23/6/2004 was admitted as Exh. D3. The letter of
acceptance of registration of Trade Mark QTM No. 001686 in class 34
for
"MASTER
"
was
tendered by DW1 as Exh.D4, DW1 also tendered a letter dated
22/11/2004 from MKONO & CO. ADVOCATES to the Registrar of Trade
Marks as Exh.D5. DW1 identified Exh.D5 as one accompanying an
application for several trade marks including the
"MASTER"
and
enclosing a cheque for 170,000/=. The ERV receipt No. 22153669 OF
22/11/2004 was admitted as Exh.D6.

DW1
went on to tell the Court that after the payments, the trade mark
was advertised in the Trade Mark Journal of 15/3/2005. Upon
advertisement the trade mark was registered vide a certificate which
he tendered as Exh.D7.

He
went on to inform the Court that TCC had also attempted to register
the trade mark as her own. For that he produced a copy of the letter
dated 26/10/2004 from the Registrar to TCC as Exh.D8. He said
according to Exh.D8, TCC's application for registration No. QTM
001859
"MASTER"
in
class 34 was refused on the ground that it was similar to QTM
001686.

He
went on to identify Exh.Pll as the cigarettes manufactured by
MASTERMIND. He said they came into the market in February 2005, and
it was launched to the retail outlets by using picture brands and
public address systems including posters and photos of a branded
car. He admitted one poster and photo of a branded car as Exh.D9
collectively.

He
said since issuing a press release the Master Trade Mark is now well
known in Tanzania. He mentioned the Guardian, the Daily News,
Mtanzania, Tanzania Daima, the Citizen and Majira newspapers as
carrying the said press statement. He said MASTERMIND now produces
MASTER FILTER, MASTER MENTHOL, MASTER LIGHT AND ROCKET, and that
marketing had now spread to Morogoro, Dodoma, Singida, Kigoma,
Moshi, Tanga and Mtwara, expanding from Dar es Salaam. He said the
Master Cigarettes are produced, packed and labelled as demonstrated
in Exh.P11. He said MASTERMIND has not authorized any other Company
to produce or market the Master Cigarettes.

DW1
went on to tell the Court that TCC's passing off MASTERMIND
'S
products
is vividly admitted by TCC's own pleading in paragraph 6 of the
plaint in which they admitted to have started manufacturing SAFARI
Cigarettes, (Exh.P6). He said there are certain similarities between
Exh.P9 and Exh.Pl1. which include the blue background, the sun/moon,
the lines on top and the bottom of the packets. DW1 said this was an
infringement of their label.

He
said his Company took 5 years to prepare before starting
manufacturing those cigarettes. He said according to Ex.P3 and
Exh.D3, MASTERMIND was the first to apply for registration. Exh.P3
and D3 are ERV receipts dated 20/9/2004 and 23/6/2004 respectively.
With this the witness prayed for the dismissal of the suit, and
judgment for MASTERMIND on the counterclaim.

DW1
was thoroughly cross examined by Mr. Mnyele, learned Counsel. He
said he has over 40 years working experience in marketing, having
worked for East African Tobacco Company in 1963, in the course of
which he attended several courses in marketing and salesmanship in
and out of the country.

He
said it was true TCC's application for registration was refused
because the trade mark had been allotted to some one else. He said
according to Exh.Dl, MASTERMIND had applied for MASTER filter label
and that is the registered trade mark. He said in Exh.Pl, there is
also an application for MASTER trade mark by TCC also for MASTER
filter label. He said according to Exh.D8, the Registrar had refused
registration because it was similar to a previous application, and
MASTERMIND has the trade mark already.

DW1
said MASTERMIND began to produce the MASTER Cigarettes in January,
2005 and distribution began in February 2005, but admitted that at
that time the trade mark was yet to be advertised and registered. He
further admitted that no promotion was done prior to February 2005
and the stories/press statement carried in March 2005 was a follow
up. DW1 identified Exh.Pl7 - 21 as the said newspapers. He said that
it was therefore true that the promotion was carried out between 18
- 22/3/2005.

DW1
said he knew the meaning of goodwill in business or product or
service. He said goodwill is based on the quality, availability,
affordability and continuity of supply of a product and is acquired
over a period of time, depending on the type of product and the
market. On this account he admitted that no goodwill could be
acquired within a week or a month. He told the Court that in this
case MASTERMIND started its promotion between 18 -22/3/2005, but had
filed her Written Statement of Defenee on-10/3/2005. Therefore, the
witness admitted, no promotion had been made, and no goodwill
acquired before filing her defence.

Lastly,
DW1, told the Court that passing off meant using somebody else's
product/trade mark as one's own. He said however, that he had no
evidence to show, that TCC were selling SAFARI as MASTER Cigarettes.
He also admitted that the two brands are similar and may be
confusing and deceptive.

Ms
Kasonda took time to re examine DW1. In the course, DW1 told the
Court that according to Exh.D4, the trade mark MASTER was registered
on condition that MASTERMIND delete all the words except "MASTER"
which was the dominant word in the trade mark. DW1 said although
they started production in January 2005, their application for
registration had been filed since June 2004.

Lastly
DW1 said they were suing TCC to avert their intention to manufacture
and sell SAFARI Cigarettes which DW1 said he had seen them in Court.

Dw2
LILIAN THOMAS KIMARO is the Deputy Registrar of Trade and Service
Marks. Her duties include scrutinizing new applications and signing
certificates of Trade marks and preparing patents for services and
trade marks journals.

She
said in the course of her duties she had come to deal with the
registration of MASTER and SAFARI trade marks. She identified
Exhibits
Pl,Dl,and
D3.

She
said Exh.Pl was filed on 6/9/2004, whereas Exh.Dl was filed on
23/6/2004 and that both have similar/identical labels.

She
opined that the validity of a trade mark becomes affective from the
date of filing. In priority of time Exh.Dl was filed first. She said
the law would not allow registration of two similar logos or trade
marks. In this case, two similar logos were registered by mistake
because the search personnel were unable to uncover the prior
application. She said, if the first one would have been seen, the
SAFARI trade mark would not have been registered

She
went on to opine that the effect of registering the same trade mark
twice is that its registration remains valid until the aggrieved
party proceeds under s. 36 of the Trade and Service Marks Act. DW2
was then referred to Exh.P14
a
notice
of opposition filed by TCC. She told the Court that according to the
law, the Registrar had to transmit the notice to the opposite party
who would be required to reply. The reply is transmitted to the
other party, who would then file evidence in reply, before the
matter is heard by the Registrar.

She
said however, in the normal circumstances, once a notice of
opposition is filed no certificate of registration can be issued.
However, in the present case, the notice of opposition was belatedly
filed in the file after issuing the certificate. But, she ended, the
registration was valid, and it was open to any aggrieved party to
proceed under s. 36 of the Act, and challenge the registration.

Cross
examined by Mr. Mnyele, learned Counsel, DW2 told the Court that she
was conversant with the provisions of the Trade and Service Mark Act
and the Rules. She said according to the law once a certificate of
registration of a trade mark is issued, a party is entitled to
exclusive right of use of the trade mark. She said she was the one
who dealt with the registration of MASTER trade mark. She said
according to the rules any opposition has to be filed within 60
days, and that Exh.Pl4 (a notice of opposition of the registration
of MASTER was filed in time. It was the duty of the Registrar to
serve the notice to the other party. She admitted that, in this case
the notice of opposition was not promptly served on the other party
due to the automation exercise that was going on in their office at
the time. She said if she had seen the notice, the Registrar would
not have registered the trade mark. Lastly she said their office has
not received any application for the removal of the MASTER trade
mark from the register. And with that the Defendant's case came to
rest.

Learned
Counsel then proceeded to argue their final submissions in writing.
For the sake of avoiding duplicity, I will proceed to examine
Counsel's arguments in each issue, and express my determination
thereon. I will adopt the approach taken by the learned Counsel for
the Plaintiff of discussing the issues in two sets, first those on
the main suit; and second, those of the counterclaim.

On
the main suit, the first issue is whether the Defendant has
infringed the Plaintiffs trade mark? Mr. Mnyele learned Counsel for
the Plaintiff submitted that the tort of infringement is provided in
s. 31 of the Trade and Service Marks Act 1986 which gives a right to
a registered owner of a trade

mark to sue for damages and/or prevent other persons from using the
said trade mark. He then quoted s. 32 of the Act, which defines what
constitutes infringement. Mr. Mnyele learned Counsel pinned down
his case by submitting that by manufacturing master cigarettes,
using labels that resemble those of the Plaintiff, the Defendant has
committed an act of infringement as the labels are deceptive and
confusing to the ultimate consumer of the products. On the
general statement of the law of infringement the learned Counsel
referred the Court to two cases one decided by the High
Court (Commercial Court) of Kenya of
PHARMACEUTICAL
MANUFACTURING CO. VS. NOVELTY MANUFACTURING CO. LTD

(2001)
2.E.A at p. 521, and one from Uganda; in
AKTIEBOLASET
JONKOPING VULCAN INDSTRICKS FABRIKSAK TIEBOLAG VS EAST AFRICAN MATCH
CO LTD
[1964]
E.A 62. Mr. Mnyele then proceeded to submit that on the facts and
evidence on record, the Plaintiff has proved that it has good title
on the infringed trade mark, as exhibited by Ex.P6. He said
according to KERLY at p. 293; the certificate of registration was a
prima facie evidence of title on a particular mark. He urged the
Court to disregard the testimony of DW2 to the effect that the
SAFARI trade was inadvertently and therefore wrongly registered
because that allegation was not only not pleaded, but also reflected
poorly on the running of the Registrar's office which should not be
condoned by the Court. Besides, the evidence was hearsay and that it
would be unjust and against public policy for a party to suffer at
the hands of the Registrar's negligence. He said after all Exh.P2
was in itself evidence of compliance with all the legal requirements
as per part IV of the act.

The
learned Counsel then proceeded to submit that the Plaintiff has, on
a balance of probabilities proved that the MASTER Cigarettes labels
resemble and are deceptively and confusingly similar. The learned
Counsel referred me to a case arising from SIERA LEONE of
MICHAEL
ABOUD AND SONS VS PEE CEE AND SONS (PAUTAP STORES LTD

[1970] 3 ALR (Commercial) for guidance as to how to consider
similarity of trade marks. He submitted that there is sufficient
evidence on record from PW1 and Exh.P9 and P11 apart from PW3, PW4,
PW5, PW6 and PW7 who confirmed that the two labels were confusingly
similar and deceptive. So he urged this Court to answer the first
issue in the affimative.

On
the other hand, Ms. Kasonda, learned Counsel for the Defendant,
submitting on the first issue said that in order for infringement to
be established under s. 32 (1) of the Trade and Service Marks Act
No. 12 of 1986, the trade mark must be used by a person who is not a
proprietor or registered user of the trade mark. She submitted that
the Defendant was the owner of he Master Trade Mark on the strength
of Exh.Dl. She submitted that according to Exh.D4. the application
of the Defendant was duly accepted, and duly registered on
20/5/2005. She submitted that therefore it was illogical to say that
the Defendant was infringing someone's trade mark. She went on to
quote a passage from
JEREMY
PHILIPS book TRADEMARK LAW

at p. 228.

Ms.
Kasonda went on to submit that the Plaintiff was very much aware of
the existence of the Defendant's pending application for MASTER
label trademark as evidence by Exh.D8 and admitted by PW1. She said
there was no provision in the Trade mark Act which prevented an
applicant

of a trademark from using the trade mark pending the issuance of a
certificate of registration. She therefore called upon the Court to
answer the first issue in the negative.

The
bone of contention here is that the Defendant has infringed the
Plaintiffs trade mark registered in the name of SAFARI. S. 2 defines
the term
"trade
or service mark"
mean:
-

"any
visible sign used or proposed to be used upon in connection with or
in relation to goods or services for the purposes of distinguishing
in the course of trade or business the goods or services of a person
from those of another".

The
term
"visible
sign

"
is
defined to mean -

"Any
sign which is capable of graphic reproduction, including a word,
name, brand, device, heading, label, ticket, signature, letter,
number, relief stamp seal, vignette emblem or any combination of
them "

In
the present case the name of the Plaintiffs registered trade mark is
"SAFARI",
whereas
that of the Defendant is
"MASTER".
So
the disputed visible sign is not in the form of a name, as the names
are different. What the parties claim is the similarity in pictorial
representation in the packet of the two products.

I
gather this from the evidence of the parties on record. Thus PW1
testifies on p. 15 of the typed proceedings:

"In
SAFARI and MASTER LIGHTS there are circles in the middle. The words
SAFARI and MASTER are similarly positioned in the same manner. The
colouring of the labels (blue) is also similar. The
characteristics and simulation of the above and lower lines are
similar. The dress up of the packets are similar
'.

And
PW2 at p. 20 of the proceedings says:

"From
a distance the colours the shapes and the positioning of different
elements in the packets (are the same) "

Earlier
on, PW2 had observed:

"The
invention of the SAFARI trade mark to indicate the introduction of
either sunrise or sunset. The idea behind Master Mark is also the
rising and setting of the sun on a dark blue background. So these
and SAFARI virtually represent the same thing".

And
DW1, testified on p. 43 of the proceedings that:

"There
are certain similarities (between Exh.P9 and
P11).
The blue colour, the_sun/moon the lines at the top and bottom are
almost similar".

So,
even as between the witnesses from each side, there is little doubt
that the two brands of cigarettes
"SAFARI"
and
"MASTER
".
(Exh.P9
and P11) are similar in appearance. That they are confusingly
similar is, amply demonstrated by PW1, PW2, PW4, PW5, PW6 and PW7.
Having myself closely scrutinized them I too conclude that the two
brands have similar visible signs or get up except for the names.
Therefore each is a trademark by definition. The question is who is
the owner of the trade mark in dispute leaving the names aside.

Section
14 (1) of the Trade and Service Marks Act stipulates:

"14.
(1) The exclusive right to the use of a trade service mark as
defined in section 32 shall be acquired by registration in
accordance with provisions of this Act.

(2)
Registration of trade or service mark shall not be considered
validly granted until the application has fulfilled the conditions
for registration. "

S.
20 (1) of the Act prohibits the registration of, a trade or service
mark which is identical with a trade or service belonging to
different
proprioter and already on the register in respect of the

same goods services or closely related goods or services or that so
nearly resembles that trade or service mark as to be likely to
deceive or cause confusion.

This
takes me to the next question. Resemblance of the graphics apart
which of the two trade marks is valid under ss.
14(1)
and 20 (1) of the Act?

It
is evident from the wording of that section, this will have to be
decided by reference to the date of registration of each of the
trade marks.

From
the evidence on record, the Defendant filed her application for
registration of the trade mark on 24/6/2004. (Exh.D2) and the mark
was finally registered on 20
th
May 2005 as per Exh.D7. According to Exh.D7, the registration became
effective from 24/6/2004. It was registered in Class No. 34 under
No. 30748. On the other hand the Plaintiff had filed her application
for registration on 6/9/2004 (Exh.Pl and was eventually registered
on 20/1/2005 but with effect from the 6/9/2004 (Exh.P6).

According
to s. 28 (1) (b) of the Act the date of application is deemed to be
the date of registration if the application shall not have been
opposed, or if opposed, the opposition has been decided in favour of
the application. True, in this case the Plaintiff filed an
opposition to the application of the Master Mark on 4/5/2005.
(Exh.P14). In that notice, the Plaintiff described herself as the
registered proprietor of SAFARI registered on the 6
th
day of September 2004. It is also true that the opposition has not
been determined in favour of the Defendant.

In
my view in the light of the provisions of ss. 20 (1) and 28 (1) of
the Act and the evidence of DW2 the Assistant Registrar of Trade and
Service Marks, the Plaintiffs mark would appear to be not validily
registered by reason of a prior application for registration of the
Defendant's mark. So apparently in the words of s. 28 of the Act,
the application of the Plaintiffs SAFARI trade mark and Exh.P6, was
accepted/issued in error, and therefore apparently invalid. The
reason is to be traced in the chronology of the

events, which shows that in priority of time, the Defendant's MASTER
trade became effective on 24/6/2004, whereas the Plaintiffs became
effective on 6/9/2004. On the face of it therefore it appears that
the Defendant is the lawful proprietor of the
MASTER
Lights

trade mark. (Ex.P 11).

Mr
Mnyele, learned Counsel for the Plaintiff has referred to this Court
a number of persuasive authorities. With great presence of mind, I
have studied the decisions cited to me by Mr. Mnyele and I have no
qualms in expressing my gratitude and appreciation to the learned
Counsel.
I
have
with respect, no doubt that the extracts from
BLANCOWHITE
KERLY'S LAW OF TRADE MARKS AND TRADE NAMES

12
th
edition, represent good law and are of persuasive authority
especially on the manner of proving some aspects of infringement.

I
have also no doubt that the statement of the law by Sir Udo Udoma in
the
TIEBOLAC
case represents the position of the law on trade marks, and have no
hesitation in adopting that approach myself in the present case.
However, with due respect, to the learned Counsel,
PHARMACEUTICAL
MANUFACTURING CO. VS NOVELITY MANUFACTURING LTD
2001
2 EA. at p.521, was decided on different facts. In that case, the
Defendant admitted infringing the Plaintiffs trade mark and
accordingly judgment was entered against it. In the present case,
the Defendant has not admitted infringement. So that case is
distinguishable from the one at hand. Again in
AKTIEBOLAGET
JON KOPING VULVAN INDSTRICKSFA - 'BRIKSAKTEBOLAG
V
EAST
AFRICA MATCH CO. LTD

[1964] EA 62, the Court there found that the two labels were
completely different both as to their get up and lay out generally.
In the present case, I have already found above that the two
competing trade marks
SAFARI
and
MASTER
are similar and confusing. And in the West African case of
MICHAEL
ABOUT) AND SONS VS PEE CEE AND SONS (PAUTA STORES

[1970] AER. Comm. 284 the Court found that since the Defendant was
willing to give some undertaking in their reply not to import JACK
BRAND products, which appeared to resemble the Plaintiffs that was
evidence of acknowledgement that they had done something wrong and
judgment was partly based on the acknowledgment. Here the Defendant
has not made any undertaking of such a nature. The facts in this
case are therefore different from those in the cited cases.

I
accept the proposition put by the learned Counsel that infringement
means counterfeiting or making a colourable imitation of another
person's trade mark which is registered (See
AMERICAN
CYANAMID V ETHICOS

[1975] PRC 513. I also accept the position enshrined in s. 32 of the
Trade and Service Marks Act that no infringement can be committed by
a proprietor of a trade mark. And I have no doubt in my mind that
both "SAFARI" and "MASTER" labels, which are
confusingly similar have been registered under the Trade and Service
Marks Act and that under s. 50 (1) registration is prima facie
evidence that the law has been complied with. The first question
that I have to decide is whether or which of the trade marks is
valid in the eyes of the law?

According
to section 14 (1) of the Trade and Service Marks Act, exclusive
right of use of a trade mark is acquired by registration in
accordance with the provisions of the Act, and that registration
shall not be considered validly granted until the application has
fulfilled the conditions

for registration. And s. 20 (1) of the Act prohibits the
registration of a trade mark which is identical with a trade or
service mark belonging to a different proprietor and already in the
register in respect of the same goods, or service closely related
goods or service.

On
the other hand, it is also the law that section 28 (1) of the Act
prohibits the registration of a trade mark whose registration has
been opposed until that opposition has been decided in favour of the
applicant. The case of the
REGISTRAR
OF TRADE MARKS AND ANOTHER
VS
KUMA
RAUJAN SEN AIR 1
966,
CALCUTTA 311, cited by Mr. Mnyele, learned Counsel, no doubt
therefore represents the correct position of the law.

In
the present case, there is no doubt that when the Registrar
proceeded to

register
the
"SAFARI"
trademark
an application for registration of
"MASTER"
was
pending after it had been filed three months before. According to
DW2, the SAFARI mark was wrongly registered in the circumstances.
Mr. Mnyele has strongly protested to this evidence, branding it
hearsay and against public policy as it reflects on the inefficiency
of a public office. I do not agree with Mr. Mnyele. The Registrar
has a statutory duiy to see that all registrations are done in
accordance with the law. And as seen above Section 20 (1) of the Act
prohibits the registration of identical marks by two different
persons. There can be no estoppel to that statutory duty. Although
Section 20(1) of the Act protects a trade or services mark of a
different proprietor and already in the register and that the MASTER
trade mark had not been registered when the SAFARI was registered
but as we shall see below since it was pending and as long

as; section
30
protects
the right of an unregistered user of a trade mark it is contrary to
the spirit of that provision and public policy if the Registrar was
allowed to ignore a pending application for registration in favour
of a later applicant for the same mark. I would for that purpose be
prepared to stretch the definition of the term "
already
in the register"

in section
20
(1)
to include a trade mark whose .. registration was pending with the
Registrar. That is even more so if the concept of retrospectively of
the registration of a trade mark enshrined in section
28
of
the Act is to have any meaning at all.

But
there is something else. The registration of SAFARI has been
challenged for having been registered fraudulently That allegation
is found in paragraph 4
:2
of
the Defendant's written statement of Defence and opposed by the
plaintiff in paragraph 4
:2
of
the reply. It forms the second issue in the main suit, which I will
have to consider before returning to the first issue.

Submitting
on that issue Mr. Mnyele learned counsel submitted that is a
question of fact and that the Defendant had to prove it on a
standard higher than on a balances probabilities He cited
RATILAL
GORDHAWBHAI VS.LALJI LAKANI

(1957, E.A. 314 as authority for that proposition. He submitted that
the Defendant has failed to prove fraud to the required standard. Ms
Kasonda learned counsel for the Defendant submitted that there was
sufficient evidence on record to prove fraud on the part of the
Plaintiff. She said that
PW1
knew
that MASTER'S application for registration was pending when the
plaintiff submitted an application for registration of a trade mark
which was similar to the MASTER. Furthermore the plaintiff also
attempted to register the MASTER label but the application was
refused She borrowed a passage from T.A. BANCO AND ROBIN JACOB'S
took
"KELLY
LAW OF TRADE MARKS

(12
th
ed. and page 178 to define "fraud."

"It
might be fraud for a person to procure the registration of a trade
mark as ....which he knowsh he is not entitled to claim the
exclusive use of ....if for instance he knows that it is used by
another trader"

With
that she concluded that by conceding their knowledge as to the
existence
or
MASTER
trade mark pending with the registrar and by proceeding to register
the SAFARI with that knowledge, the Plaintiff must be deemed to

have
registered it fraudulently.

It
is true that the term "fraud" is not defined in the Trade
and Service Marks Act, although it is used in several provisions of
the Act, such as ss. 37 and 50(2). In
BROOM'S
LEGAL MAXIMS

10
th
ed. at page 542 the mode of proving fraud is discussed .

"
fraud is proved when it is shown that a ..

representation
has been made (1, knowingly or (2) without belief in the truth or
(3) recklessly without caring whether it be true or false "

And
in
LEGAL
THESAURUS

edited by M. MONIR at page 176 "fraud" is classfied in to
two categories '
actual'
and
"constructive"

"The
former applied to those cases in which there is an intention to
commit a cheat or deceit upon another person to his injury. But
constructive frauds are meant of such acts or contracts as although
not originating in any actual design or contrivance to perpetuate a
positive fraud or injury upon other person .. but their tendeny to
deceive or mislead other persons or to violate private or public
confidence or to improve or injure the public interest, are deemed
equally reprehensive with positive fraud and the refore are
prohibited by laws or within the same reason and mischiefs as acts
or contracts done mala anomie "

In
the present case, and on the facts and evidence on record there is
no doubt that the Defendant's application for registration was lying
pending in the office of the Registrar. It is evident from the
testimony of PW1 that the Plaintiff knew of the pending application.
The Plaintiff filed an application to register
"MASTER"
which wes rejected on account of it being similar to a pending one.
By proceeding to register the
SAFARI
the Plaintiff either knowingly or recklessly did so without caring
whether or not the two marks resembled. After procuring registration
the Plaintiff then filed an apposition to the registration of MASTER
which the Plaintiff knew had been pending for over three months
prior to the filing of their application. So I have every reason to
conclude that by so doing the Plaintiff intended to violate the
Defendant's right and cause injury to her. Direct evidence of actual
design or contrivance to perpetrate a positive fraud, may be
wanting, but I am positive that constructive fraud has been
established by the available strong circumstantial evidence.

For
the above reason, I will answer the second issue in the affirmative.
I find and hold that the registration of the
SAFARI
mark
under dispute was procured fraudulently .

The
combined effect of my finding in the second issue and my discussion
on the first issue generally is that although the SAFARI mark has
been registered, its registration was obtained by fraud , and in
terms of section 50 (2) of the Act its registration was invalid. And
nince Infringement only protects a registered trade mark and since
in law registration is valid only if it complies with all the
conditions of registration, and since DW2 has also shown that the
SAFARI mark was registered by mistake I will proceed to hold that
the Plaintiff cannot maintain an action on infringement.

On
the other hand it is true that the Defendant's trade mark was
eventually registered on 20/5/2005, and since it was pending since
24/6/2004, it is deemed to have been effective as from the latter
date. Howeover it is also true that when it was registered a notice
of oppositon against its registration was pending.

And
it is clear that no registration in law could properly proceed
without first deciding the opposition in favour of the applicant. By
so proceeding to register, the Registrar violated section 28 (1) (b)
of the Act. For the same reasons, therefore the Defendant is not the
lawful propritor of the Master trade mark under dispute either.
Therefore it cannot be protected under section

32
(1) of the Act. The argument of the learned caunsel for the defence
therefore also fails.

So
all said, the first issue is answered in the negative, not because
the Defendant is protected under section 32 (1) of the Act but
because the Plaintiffs trade mark now in dispute was registered
fraudulently and by mistake and would not confer in law, exclusive
right of use of that trade mark to the Plaintiff. And under section,
31 and 32 of the Act only valid registration c
an
be
protected by an action in infringement.

The
third issue is whether the Defendant has prior rights over MASTER
trade mark by virtue of making the application first? It was
submitted by Ms. Kasonda, that the validity of a trade mark dates
back to the date of the application for registration. She sheltered
herself with the provisions of ss. 20 (1) and 28 (1) of the Act. She
therefore asked the Court to hold that :he Defendant has prior
rights over the Master trade mark.

Mr.
Mnyele, learned Counsel for the Plaintiff, while conceding the right
of use of a prior applicant of a trade mark, submitted that that
right would only be effective upon the application being registered.
And since under S. 28 (1) of the Act the MASTER trade mark should
not have been registered pending the determination of an opposition
against its registration the Defendant had no prior rights over the
mark. He reinforced his argument by citing an Indian case of the
REGISTRAR
OF TRADE MARKS AND ANOTHER VS KUMAR RANJEE SEN AIR


[
1966]
CALCUTTA..
I
have
no doubt that the case cited by the learned Counsel, represents good
law.
And
I
have
already held above that both
SAFARI
and
MASTER
were
wrongly registered in law. And
I
have
no doubt in my mind that a proprietor of a trade mark acquires
exclusive use of the trade mark, upon registration. But the question
here is, whether the person has a prior right of use of a trade

mark
which he has only applied for registration?

It
was held by the Supreme Court of India in
N.R.
DONGRE VS. WHIRLPOOL CORPORATION

[1996] 5 SCC. 714, quoted in
SARKAR
ON TRADE MARKS

- Law and Practice 4
th
(ed.) at p. 172, that -

"A
trader needs protection of his right to prior use of a trade mark as
the benefit of the name and reputation earned by him cannot be taken
advantage of by another trader by copying the mark and getting it
registered before he could get the same registered in his favour. "

Therefore
a trader's right of use to a trade mark is protectable before
registration.'

In
the present case, the Defendant had filed her application for
registration of her MASTER trade mark three months prior to the
Plaintiffs application. Although the Plaintiff procured the
registration of SAFARI graphic label earlier/before that of the
Defendants the Defendant nevertheless had prior rights over MASTER
trade mark by virtue of making the application first. Therefore the
third issue is answered in the affirmative.

The
fourth issue is whether the Defendant has extensively marketed the
MASTER brand cigarettes so as to make it well known?

It
was submitted by the learned Counsel for the Plaintiff that although
the MASTER cigarettes were promoted through newspapers and posters
as demonstrated by Exh.Pl7 - P21, and Exh.D9, this was only for a
short period, and its impact not demonstrated by any other witness
apart from DW1 who stayed in office. He said the Defendant could
have but failed to produce corroborative evidence as to whether the
MASTER cigarettes had reached Morogoro, Dar es Salaam, Singida,
Kigoma, Moshi, Arusha, Tanga and Mtwara. He therefore concluded that
the issue had not been proved by the Defendant to warrant an
affirmative nod.

Ms
Kasonda, learned Counsel for the Defendant submitted that a mark may
be famous notwithstanding how long it has been in the market. For
that proposition she quoted a passage from a book
FAMOUS
AND WELL KNOWN MARKS

by
Frederick W. Mastert. She said Exh.Pl7 - P21 had a wide circulation
in the country. She said even some customers interviewed by PW3 had
indicated that they were aware of the MASTER Cigarettes. She
therefore said this constituted sufficient evidence to convince the
Court to answer the 4
th
issue in the affirmative.

I
am aware that this is a civil case, and that as a rule no
corroboration is required to prove any allegation. What is required
of any party in such case is to prove her case on a balance of
probabilities And that whether there is any evidence at all is a
question of law, but whether that evidence is

sufficient is a question of fact. (See
R
VS TAIBALI MOHAMED BAHI
[1943]
10 eaca 60.

Let
me begin with Ms. Kasonda's submission in which she quotes a passage
from MASTERT'S book. The passage was however, conveniently, not
quoted in full. Whatever was available, the full passage reads:

"A
mark may become famous and well known almost overnight through
modern advertising and advanced technology. "

That
is the part quoted by Ms Kasonda. But the passage does not end
there. It continues:

"More
frequently a mark will become well known with the passage of time
by
dint of the continued expenses of resources, time... ",

My
understanding of this passage read as a whole is that as a rule
marks take time to be known although in exceptional cases, through
modern technology
end
advertisement
this could take a short time. So the fame of a trade mark is
normally a function of time.

In
any case the passage quoted by Ms Kasonda, is not, in itself
evidence. It is an opinion from an expert on science as to the type
of technology hat could be used to promote a trade mark. Such
opinion appears in the learned's Counsels final submission for the
first time. But as the Court of Appeal of Tanzania once said in
MORANDI
RUTAKYA MIRWA VS PETRO L JOSEPH

[1990] TLR 49 a

submission is not evidence. And even if it were evidence it should
have contained grounds for forming such opinion.

The
passage quoted by Miss Kasonda contains no grounds for forming that
opinior, and it is therefore, together with all the other reasons,
above not evidence at all in law.

As
for the newspapers Exh.Pl7 - 21 I accept and find as a fact that
they published the MASTER trade mark for about 3 or 4 days, but
whether they are of wide circulation in the country is a question of
fact. And the Court cannot have judicial notice of that fact as it
is not expressly listed under s. 59 of the Evidence Act 1967.
Exh.Pl7 - P21 were produced by PW2 under cross examination. I do not
remember to have heard her say that these newspapers had a wide
circulation in the whole of Tanzania. Neither did DW1 ever say so.
On the premises, I find that while there might be some evidence on
record, that evidence is not sufficient to establish that that stint
of promotion was enough to make the cigarettes well known. In fact,
both PW2 and DW1 admit that a goodwill is acquired over a period of
time DW1 said in cross examination that no goodwill can be acquired
within one week or one month. For all the above reasons I will
answer the 4 issue in the negative.

The
fifth issue is whether the trademark SAFARI was changed by the
Plaintiff so as to resemble the trade mark MASTER?

Mr.
Mnyele learned Counsel submitted that on the evidence on record, it
cannot be said that the Plaintiff imitated the MASTER trade mark to
make

the SAFARI trademark. He relied on the evidence of PW1. He said the
Defendant had a duty to prove the imitation and failed to do so. So
he prayed that the issue be answered in the negative.

Ms.
Kasonda, learned Counsel for the Defendant submitted that since the
Plaintiff has quite a number of SAFARI labels (Exh.P7) some of which
she does not use and which are distinct from MASTER, the Plaintiffs
application of the SAFARI trade mark in dispute which resembles the
MASTER was ill intentioned, as the Plaintiff was aware of the
existence of MASTER'S application for registration. She said this
was admitted by PW2. So by rushing for the registration of a similar
trade mark, the Plaintiff s intention was to prevent the Defendant's
entry into the market. So in her opinion this was sufficient
evidence to prove that the Plaintiff changed the SAFARI trademark to
imitate the MASTER trademark, and so, argued that the fourth issue
be answered in the affirmative.

I
agree with Mr. Mnyele, that imitation is a question of fact and has
to be decided on the basis of the evidence on record.

It
is true that according to Exh.P6 and P7, the Plaintiff had
registered different types of SAFARI. The SAFARI KALI FILTER and
SAFARI KING SIZE were graphically and colourably different from the
SAFARI KING SIZE FILTER shown in Exh.P6. According to Exh.Pl, this
type of SAFARI brand was submitted for registration along with
MASTER on 6/9/2004. The MASTER LIGHTS trademark was by then pending
registration. Looking at Exh.P8 (SAFARI KING FILTER and Exh.P7 and
P10
(MASTER LIGHTS) it is difficult to see the difference immediately.
In fact, all the parties agree that the two brands are confusingly
similar.

There
is no direct evidence that the Plaintiff imitated the MASTER
trademark from
SAFARI
label

and resemblance per se does not prove imitation. But as I posed to
answer the second issue, the 3 months prior existence of the
application for registration of
MASTER
trade mark, together with the Plaintiffs admitted knowledge of
MASTER and their intention to launch their products in the market,
and the close resemblance of the two brands is not a mere
coincidence. I think these factors build a strong circumstancial
evidence that call for some satisfactory explanation from the
Plaintiff. As I found in the second issue I find no satisfactory
explanation for that coincidence from the Plaintiff as the existence
of that coincidence is, I think, peculiarly within the Plaintiffs
knowledge, and s. 115 of the Evidence Act requires that:

"115. In
civil proceedings when any fact is especially within the

knowledge
of any person the burden of proving that fact is upon him. "

The
evidence of PW2, that she was involved in the SAFARI Trade Mark
graphics does not assist the Court because she did not indicate the
date of that
"invention".
I
suppose the intention of the evidence of PW3, and PW4, in mentioning
an ex worker of the Plaintiff in the name of CHOMBA was to introduce
that CHOMBA may have transferred that
"invention
"
to
the Defendant Company. However, we don't know when did CHOMBA cease
employment, with the Plaintiff; and since even PW2 did not indicate

when that invention was made, the evidence of PW2, PW3 and PW4 is
not sufficient to prove that the Plaintiff
"invented"
the
graphic in dispute and thus offer some explanation for that
coincidence. On the other hand, DW1 produced Exh.Dl to show that at
least in point of time the Defendant was the first to apply for
registration of that brand. I think an earlier application raises a
rebuttable presumption that any subsequent application of a similar
mark, may be a result of imitation. The burden of rebutting that
presumption is, in this case on the Plaintiff, and I am not
satisfied that the Plaintiff had discharged that burden. Therefore,
I will answer the fifth issue in the affirmative.

I
will leave the answer to the 6
th
issue to the end of this judgment. I will now turn to examine the
issues raised in the counterclaim.

The
main suit in this case was tried together with the counterclaim.
MASTER MINDS' claims against and which are refuted by TCC are set
out in the introductory part of this judgment. And from the
pleadings the following issues were framed for trial of the
counterclaim:

  1. Whether
    the Defendant (TCC) has passed off MASTERMIND'S MASTER Cigarettes
    by manufacturing Safari Cigarettes?

  2. Whether
    MASTERMIND has any exclusive rights in MASTER trademark?

  3. Whether
    MASTER has goodwill over the trademark MASTER to protect.

  4. Whether
    TCC has engaged in unfair competition against MASTERMIND?

  5. To
    what reliefs are the parties entitled?

Next
I will examine the learned Counsel's final submissions on each of
the issues.

Submitting
on the first issue. Ms. Kasonda, learned Counsel for MASTERMIND
submitted that passing off is a tort consisting of a
representation that a person's goods or business are connected with
the goods or services of someone else. Quoting s. 30 of the Trade
and Service Marks Act she submitted that the Act does not bar a suit
for passing off even against a registered trademark proprietor.
The learned Counsel went on to submit that on the evidence on
record,TCC manufactured cigarettes similar in design and labels to
those of MASTER. She said, quoting from KERLY'S LAW OF TRADE
MARKS AND TRADE NAMES that this was wrong. She submitted that even
a registered trade mark proprietor has no right to use a registered
mark if that mark would deceive. For that proposition the learned
Counsel referred me to some English decisions of
INTER
LOTTO UK LTD V CAMELOT GROUP PLC

[2003] 3 All ER 191. and
LEVER
AND OTHERS VS GOODWIN AND OTHERS

(1886 - 1890) All ER. 427.

The
learned Counsel concluded that by imitating the get up of MASTER TCC
has brought itself within the old common law doctrine, in
respect
of which equity will give to MASTERMIND an injunction in order to
restrain TCC from passing off the SAFARI goods as those of
MASTERMIND'S. So she submitted that the first issue be answered in
the affirmative.

On
the other hand, Mr. Mnyele learned Counsel, concedes that much as to
the law of passing off, he quoted the same passages from
KERLY'S
LAW OF TRADEMARKS AND TRADE MARKS at p.
334
and
SALMOND ON TRADEMARK LAW AND PRACTICE

at
p. 194 as well as
SALMOND
ON TORT

17th
ed, and the Kenyan case of
SUPA
BRITE LTD VS PAKAD ENTERPRISES LTD

2001
E.A. 263. He also quoted a passage from
RECKITT
AND COLMAN

[1990]
IWLT 59.

Having
laid bare the position of the law, Mr. Mnyele went on to submit that
in the present case, MASTERMIND has not established by evidence the
commission of the tort of passing off because MASTERMIND had had no
goodwill at the time of filing the counterclaims. He therefore
concluded by submitting that the first issue be answered in the
negative.

The
concept, principle and law of passing off, is I think, fairly well
developed and both Counsel in this case are not disputing these
principles.
SARKAR
ON TRADE MARKS Law and Practice
,
(4th
ed, has devoted quite a portion of Chapter IV of the book to revisit
and summarise, the concepts and elements of the law of passing off,
but nothing could be mere succinctly put than those put by Lord
Diplook in
ERVEN
WARNINK B.V. Vs. V.J. TOWNSEND AND SONS

[1980] RPC 31, 39 ; that the essential characterists of a passing
off action should be:

(i) Misrepresentation.

(ii) Made
by a person in the course of trade.

(iii)
To prospective customers or ultimate consumers, of his goods
supplied by him.

(iv) Which
is calculated to injure the business or goodwill'of
another trader
(in the sense that it is a reasonably
foressable consequence) and

(v) Which
causes actual damage to the business or goodwill of
the trader by
whom the action is brought, or (in quia timet
action) will
probably do so.

Here
registration or non registration of trade mark is immaterial. As the
learned author captions at p. 157:

"An
action for passing off is thus a generalized action and is
enforceable in respect of registered as well as un registered trade
marks. "

To
maintain an action for passing off, there must not only be
established that the party suing has a goodwill in the mark, but also
there must be
intention
to
deceive even if there are a few confusions in the market. Although
the
party
need not establish actual deception, but reasonable grounds for
apprehending deception, he must however establish distinctive
features, substantial user and wide reputation.

I
hive no doubt in this case that MASTERMIND and TCC are engaged in
manufacturing cigarettes. I further find that in this case Exh.P9 and
P11 are confusingly similar. I have already held above that in
priority of application MASTER MIND had prior right of use of the
MASTER trademark, over the SAFARI trademark. However such right of
use is not exclusive, unless. MASTER MIND can prove that the public
have been deceived or that there is a reasonability of deception. It
has been submitted in this case that the confusion would reign in the
get up of the products.

On
the evidence on record, it is clear in mind that although MASTERMIND
had launched its MASTER products in the market from 18 - 22, March
2005, TCC had not yet introduced the SAFARI graphic label, at all in
the market. So SAFARI was not introduced by TCC in the course of
trade Besides I agre with Mr. Mnyele, that even if TCC had introduced
it in the couse of trade MASTERMIND had acquired no goodwill by the
time of filing the counterclaim which could be injured by SAFARI.
Therefore I find that MASTERMIND has failed to meet the tests set in
WAZNINK'S
case.
I would in the event, answer the first issue to the counterclaim in
the negative.

The
second issue in the counterclaim is whether the MASTERMIND has
exclusive rights in the MASTER trade mark? Mr. Mnyele, learned
Counsel, submitted that since exclusive right of use of a trade
mark is

conferred on registration and since registration is not relevant in
an action for passing off, that is a non issue; but in any case since
MASTERMIND'S registration was itself defective MASTERMIND cannot be
said to have acquired any exclusive right of use over the mark. Ms.
Kasonda learned Counsel submitted that MASTERMIND had exclusive right
of use to the MASTER trade mark by virtue of it having been
registered by virtue of ss. 31 and 32 (1) of the Trade and Service
Marks Act. She said even if the mark is not registered, an owner of
an unregistered trade mark has exclusive right to use it and to sue
for passing off.

I
have already held above that a trader may maintain an action for
passing off at common law, whether or not the respective trade mark
has been registered. But the right to exclusive use is conferred by
statute upon registration of a trade mark by virtue of the provisions
of the statute cited by the learned Counsel for MASTERMIND. There is
also no dispute that the right to exclusive use dates back to the
date of application.

However,
in the present case, although MASTERMIND had filed its application
for registration earlier, the subsequent registration of the trade
mark was done contrary to the dictates of s. 28 (1) of the Act. To
that extent the registration was bad in law and therefore conferred
no exclusive right of use of the MASTER trade mark to MASTERMIND. The
second issue in the counterclaim is therefore answered in the
negative. The third issue is whether MASTERMIND has a goodwill on the
trademark MASTER to protect?

Mr.
Mnyele who submitted on the 1
st
and 3
rd
issues together said by first stating that passing off cannot succeed
without establishing goodwill. He relied on the speech of Lord Jauncy
in
RECKITT
AND COLMAN LTD V BORPEN INC. AND OTHERS

[1990] 1 WLT 59 to this effect:

"The
fact that the propriety right which is protected by the action is the
goodwill rather than in the get up distinguishesr the protection
afforded by the common law to a trader from that afforded by statute
to the registered holder of a trade mark who enjoys a permanent
monopoly therein. Goodwill was defined by Lord Macnaughtan in INLAND
REVENUE COMMISSIONER VS. MULLER AND CO'S MARGARINE LTD [1901] AC 217,
223 - 24 as the benefit and advantage of the good name, reputation
and connection of a business. Get up is the badge of the Plaintiff's
goodwill in the mind of the public... "

Mr.
Mnyele then proceded to submit that in the present case, the
promotion done by MASTERMIND between 18-22 March 2005 was not
sufficient to build for MASTERMIND that goodwill which could be
protected. He said this was acmitted by DW1.

Ms.
Kasonda, learned Counsel for MASTERMIND, conceded that this was the
undisputed position of the law, by reinforcing her argument by
quotations from the books
PASSING
OFF

Law and Practice by
SDALE
& SILVER LEAF and FAMOUS AND WELL - KNOWN MARKS

by Fredrick
W.
Mastert.
But said she:

"We
have already submitted in paragraph 7 above that the MASTER label
trade mark is well known by virtue of its intensive advertising and
marketing. "

In
paragraph 7 of her final submission the learned Counsel was
attempting to convince the Court to answer the 4
th
issue to the main suit in the affirmative. With respect, I did not
answer that issue in the affirmative. I am still of the same view
that in the circumstances of this case the promotion on the MASTER
trade mark was done in so short a time as it could not have built any
goodwill to MASTERMIND on the MASTER Cigarettes. I would hold
therefore that MASTERMIND had no goodwill to protect in the MASTER
trade mark as yet. This gives the third issue a negative answer.

The
fourth issue is whether TCC had been engaged in unfair competition
against MASTERMIND? Miss Kasonda, launched her submission on this
issue by quoting s. 20 (1) (a) of the Fair Trade Practices Act No. 4
of 1994. She submitted that the registration of
SAFARI
label which is similar to
MASTER
was intended to drive MASTERMIND out of business, especially
considering that TCC had attempted in vain to register the MASTER
trade mark in its own name in full knowledge that that name came from
MASTERMIND'S own name. She said this amounted to unfair competition.

Mr.
Mnyele, submitted that according to the evidence of PW2 and PW3, the
Safari Cigarettes have never been introduced into the market. And

even DW1 confirmed that TCC was selling SAFARI Cigarettes as MASTER
Cigarettes.

It
is clear from the submissions of the learned Counsel that the learned
Counsel's submissions had crossed paths on this issue. Whereas Mr.
Mnyele's submission is based on the fact that the SAFARI Cigarettes
have not yet been introduced in the market to amount to unfair
competition Ms. Kasonda's submission is benchmarked on the provisions
of s. 20 (1) (a) of The Fair Trade Practices Act No. 4 of 1994.

The
point introduced by Ms Kasonda is one of law. Although it can be
accommodated in the 4
th
issue to the counterclaim it was not directly tackled by Mr. Mnyele
in his submission.

The
stance taken by Mr. Mnyele in not replying to the substance of Ms.
Kasonda's submission, cannot, in my view, be taken to mean that the
issue was unpleaded. The issue in this case was framed and, Mr.
Mnyele's omission was sufficiently indicative that he had left that
point to the Court for decision. I am fortified on this position by
the observations of the Court of Appeal of Tanzania in
AGRO
INDUSTRIES LTD VS ATTORNEY GENERAL

[1994] TLR 43. I find it imperative therefore for me to decide on
that point of law, although not traversed at all by Mr. Mnyele.

I
think it is true that the intention of the Fair Competition Act is.
to encourage competition in the economy by prohibiting restrictive
fair practices, among other objects. And it is correct that s. 20
restricts predatory trade practice if that person does so with the
intention.

(a)
to drive a competitor out of business, or to deter a person from
establishing a competitive business in the country or in any
specified area of location within the country. "

And
s. 20 (3) (a) defines what a predatory trade practice means:

"A
person sells or supplies or threatens to sell or supply goods or
service at
certain
prices

to be below their average variable cost, or intended to drive a
competitor out of business or to deter a person from establishing a
competing business in the country. "

The
criteria for determining whether a person's act is a predatory trade
practice is the
"price"
whether
current or future. The rest of s. 20 (3) (b) to (e) are not relevant
in the present case.

In
the present case, it can no doubt be argued that by registering the
SAFARI Cigarettes, TCC may have threatened to supply the said
cigarettes, but the missing link is the
"price
".
There
is no evidence, as Mr. Mnyele has submitted whether those cigarettes
were introduced in the market and if so, at what price. Thus s. 20 of
the Fair Competition Act (Cap 285) is of no assistance in resolving
the fourth issue. It has been prematurely introduced in the present
case. Which leads me to the conclusion that since the SAFARI
Cigarettes had not been introduced in the market the question of
unfair competition does not arise. Therefore the fifth issue is
answered in the negative.

The
last issues for both the main suit and the counterclaim are, to what
reliefs are the parties entitled?

The
Plaintiffs claim is based on
infringement
on its SAFARI trade mark by the Defendant, for which it prays for
perpetual injunction, delivery of all manufactured/or imported
cigarettes that infringe the trademark, general damages and costs. I
have held above that although the Plaintiff had procured the
registration of SAFARI label earlier than the Defendant's MASTER and
since the two get ups are confusingly similar to each other, and
since the application for registration of the MASTER was made prior
to that of SAFARI and was still pending when the SAFARI was
registered, I declare that the SAFARI trade mark was fraudulently
and/or otherwise by mistake wrongly registered vis a vis the MASTER
trade mark. And since infringement is protected by registration, and
by that, I mean lawful registration, and since fraud vitiates
everything the Plaintiff had no trade mark in law in the name of the
disputed
SAFARI
which could be infringed. Therefore the Plaintiff has failed to prove
its case on a balance of probabilities, and the suit is accordingly
dismissed.

On
the other hand, MASTERMIND'S action is based on the common law tort
of

passing
off and unfair competition. I had held above that under common law, a
trader may maintain an action for passing off even if the trade marl
is not registered. In the present case, although the MASTER trade
mark was eventually registered, its registration was not in
accordance with the law, and therefore unlawful, but by reason of it
having filed an application for registration of the trade mark
earlier than TCC'S SAFARI
MASTERMIND
had
a prior right of use to the trade mark which happened

to be confusingly similar to SAFARI. Therefore MASTERMIND had a prima
facie right to protect its trade mark from passing off. However to
prove the tort of passing off, one has to further prove that he had
goodwill in the products that are alleged to be passed off. In my
judgment, MASTERMIND had not yet acquired any goodwill in the MASTER
Cigarettes when it launched the counterclaim. Without a goodwill no
action for passing off can succeed.

As
to unfair competition since SAFARI Cigarettes had not yet been put on
the market and its prices known, no predatory trade practice has been
established under the Fair Competition Act 1994 and therefore there
was no evidence of unfair competition. That leg of the counterclaim
too fails. Consequently the whole of the counterclaim fails and it
too, is dismissed.

Before
I pen off let me make a few remarks. From the look of things it
appears to me that the parties have instituted their claims
prematurely without first exhausting the machinery established within
the offices of the Registrar of Trade and Service Marks, instanced by
the pending notice of opposition filed by the Plaintiff. Their claims
are to some extent, like premature babies whose proper place is the
incubator who for this purpose is the Registrar, so that their
matters can be regularized. And the Registrar could do well to assume
and exercise his statutory duties in whatever area that has not been
finally determined in this judgment.

Last,
but not least, I would like to express my sincere gratitude and
appreciation to the learned Counsel who have exhibited immense
industry

and
invested valuable input in prosecuting the interests of their clients
and in assisting this Court.

After
so saying, I now proceed to pronounce that both the suit and the
counterclaim are dismissed and each party shall bear their own costs.

Order
accordingly.

S.A.
MASSATI

JUDGE

28/11/2005

Delivered
in Court this 28
th
day of November 2005 in the presence of Mr. Mnyele for Plaintiff and
Miss Gogadi for the Defendant.

S.A.
MASSATI

JUDGE

28/11/2005