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Title:                                     Pastificio Lucio Garofalo S.P.A v Debenham & Fear Ltd
Venue:                                   High Court at Nairobi ( Milimani Commercial & Admiralty Division)
Case ID:                               Civil Case no 823 of 2010
Authoring Judge:                J.B Havelock
Date of Decision:                 10th December 2013
Plaintiff:                               Pastificio Lucio Garofalo S.P.A
Defendant:                           Debenham & Fear Ltd

Key words:                         Trademark infringement, passing off

Facts
 The Plaintiff is an Italian company incorporated in Naples Italy and carries on the business of
importation and distribution of foodstuffs and general goods in Kenya. It is also the registered
proprietor of the trade mark ' Santa Lucia' registration of which took effect starting 23rd November, 1992. The defendant is a company with operations in Kenya and it imports a product called 'Santa Maria' whose packaging and get up is strikingly similar to Santa Lucia's. The defendant is the proprietor of the trademark Santa Maria registration of which took effect starting 24th January 2008. When the defendant got registration to the trademark, the packaging of its product was different to that of the plaintiff as it is because the registrar refused to register the trademark as it was then because it was similar to the plaintiff and other products already in the market. The plaintiff therefore brought a suit against the defendant claiming passing off and infringement on its trademark and goods.

Issues
1.    Whether the defendant by using a packaging and get up on its product that was similar to the plaintiff's amounted to an infringement of the plaintiff's trademark.

Holding
The court found for the plaintiff and held that the defendant had indeed infringed on the plaintiff's trademark and subsequently passed of its products as that of the plaintiff's thus causing confusion to customers.
Cases Cited

1.    Unilever PLC v Bidco Oil Industries [2004] 1 KLR 57
2.    A.G Spalding Brothers v A W Gamage Ltd & Another (1914-15) All E.R Rep 147; (1915) 32 RPC 273 HL
3.    Reckitt & Coleman Products v Borden Inc. & Others (1990) 1 WLR 491
4.    Commissioner of Inland Revenue v Muller & Co. Margarine Ltd [1901]
5.    CDL Hotels International Ltd v Pontiac Marina Pty Ltd [2000] 1 LRC 243
6.    Triple Five Corporation v. Walt Disney Productions (1994) ABCA 120
7.    Mr. Submarine v Emma Foods Ltd (1976) 34 CPR
8.    Brooke Bond Ltd v Chai Ltd (1971) E.A 10
9.    De Cardova v Vick Chemical Co. (1951) 68 R.P.C
10.     Weetabix Limited v Healthy U Two Thousand Ltd. HCC No. 283 of 2006
11.    E.A. Industries Ltd. V Trufoods Ltd. (1972) EA 420
12.    Parker Knoll Ltd. v Knoll International Ltd [1962] RPC 265
13.    Aktiebolaget Jonkoping v East Africa Match Co. Ltd (1964) E.A 62
14.    Orkin Exterminating Co. Inc v Pestco Co. of Canada Ltd 50 O.R
15.     General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd [1975] 1 R.P.C 203

Judgment

1.              The Plaintiff is an Italian company incorporated in Naples Italy and carries on the business of importation and distribution of foodstuffs and general goods in Kenya. It is also the registered
proprietor of the trade mark number KE/T/1993/040409, consisting of the trade mark “Santa Lucia”, registered pursuant to Class 30, Schedule III of the Trade Mark Rules made under the Trade Marks Act, Cap 506, (hereinafter “the Act). The Plaintiff’s claim against the Defendant is that of passing off and trademark infringement of its trademark and products. At paragraph 10 (a) – (f) of the Plaint dated 2nd December, 2010, the Plaintiff lays a basis for its claim. It is stated therein;
“(a) The Defendant is selling and has been selling from or about the year 2008 pasta products in
Kenya bearing the mark “Santa Maria” which mark and/or colour of package and/or configuration
and/or general appearance is identical to the Plaintiff’s pasta products bearing the name “Santa Lucia” trademark as to be likely to deceive or cause confusion to the purchasing public by mark is passing of “Santa Maria” pasta as “Santa Lucia” pasta;
b. The Defendant has been and is selling pasta in Kenya under the mark “Santa Maria” which trademark is similar to “Santa Lucia” trademark and is likely to deceive or cause confusion to the purchasing public;
c. The vending of pasta products bearing the mark “Santa Maria” by the Defendant has amounted to passing off the Plaintiff’s goods bearing the “Santa Lucia” trademark as being alike in nature under a similar, deceptive and confusingly alike mark and/or colour of package and/or configuration and/or general appearance and the goods are alike and of the same description;
d. The Defendant’s conduct in vending/advertising its goods bearing the mark “Santa Maria” has been deceptive as much as the same is computed to cause confusion among the purchasing public and especially amongst buyers of the Plaintiff’s goods bearing the “Santa Maria” trademark by misrepresenting that that the Defendant’s goods aforesaid are extremely alike to and extremely related with those of the Plaintiff aforesaid;
e. The Plaintiff has sustained and still sustains and will continue to sustain loss and injury on account of the Defendant’s continuing with its erroneous actions. Until full discovery is made, the Plaintiff cannot assert the total amount sustained by it and likely to be sustained by it emanating from the erroneous actions of the Defendant;
f. Further and full particulars of passing off and all the infringements against the trademark committed by the Defendant warrant discovery nonetheless the Plaintiff seeks to recover damages or an account of profits made by the Defendant in respect of each and every ascertainable infringement against the trademark”.
The Plaintiff’s Case
2.              The Plaintiff in asserting its claim against the Defendant reiterated that it is suffering and stands to suffer further irreparable damage, on the erroneous belief engendered by the Defendant and the misrepresentation made to purchasing customers, that the products with the trademark
“Santa Maria” are similar to those offered by the Plaintiff, to its detriment. It is the Plaintiff’s
claim that the packaging and configuration of the Plaintiff’s product is distinctive and the non-
descriptive get-up has been used and associated with its products, to which most purchasers of its products associate with. It is by the action of the Defendant in using a similar packaging to the
Plaintiff’s, that a claim has been made against it, ostensibly with regard to the passing off and
infringement of the Plaintiff’s products and registered trademark respectively.

3.                 The Plaintiff alleged that the Defendant has adopted a get up and packaging on its product,
“Santa Maria” that is strikingly similar to its own “Santa Lucia”. It is this similarity that the Plaintiff contends has been causing and is still causing confusion in the market amongst consumers who are unable to distinguish between the two brands. These actions by the Defendant unlawfully infringed on the “Santa Lucia” trademark and from which confusion has arisen that continues to benefit the Defendant, to the detriment of the Plaintiff’s goodwill and reputation. In his testimony on 20th September, 2012 PW1 Emile Viola, the Plaintiff’s Export Director, testified that the Defendant’s actions have been detrimental to the Plaintiff Company, which has been in business in Kenya for over twenty (20) years, and has built up considerable goodwill and a reputation in the market. Even though claiming that the Plaintiff Company was a market leader, PW1 was unable to substantiate the same and failed to produce any documentation as to how he had arrived at this claim. In his testimony, PW1 also stated the entry of the Defendant’s product “Santa Maria” into the market in or around 2008 was not a threat, initially, until a couple of years later in 2010 when the Plaintiff first realized that the Defendant
company had imported the product “Santa Maria” via a letter from the Kenya Revenue Authority dated 25th November, 2011 sent through the Plaintiff’s local agents, Good Brands Ltd. PW1 also submitted that the colours used in the packaging of “Santa Maria” were not registered or indeed registerable and that its claim was only the trademark name “Santa Maria”. Further, PW1 claimed that the introduction of the Defendant’s product “Santa Maria” into the market had affected the volume of sales and pricing of the Plaintiff’s products, although he adduced no evidence to substantiate these claims.

4.             On 6th November, 2012 PW2 Eunice Njuguna, the Chief Legal Officer and Assistant Regulator at the Kenya Industrial Property Institute, gave evidence on behalf of the Plaintiff, that the
Plaintiff’s trademark “Santa Lucia” was effectively registered on 23rd November, 1992. She went
on to say that the trademark “Santa Lucia” was now a device mark that includes the colour of its
packaging and not mere words. The trademark “Santa Maria” is only a word mark. In reference to Exhibit 2(a) of the Plaintiff’s documents, she reiterated that the 3rd and 4th photographs depict a similarity in the packaging of “Santa Maria” and “Santa Lucia”, with the words placed in a similar position in the device. She further detailed that the Defendant had made an application to register its trademark “Santa Maria” as a device but the same was unsuccessful as it was similar to another device registered as “Santa Regina”. In cross examination, she testified that another product, “Pasta Roma” also had similarities to “Santa Maria” and “Santa Lucia” which could not be easily discerned from each other and could, almost inevitably, cause confusion.

5.               Esther Kilonzi, the General Manager of Good Brands Ltd, the Plaintiff’s duly appointed local agent and distributor of its products, testified as PW3 and in her testimony reiterated her witness
statement dated 18th May, 2012. She testified that on or about 2010, she became aware of the brand “Santa Maria” that was circulating in the market that was similar to the Plaintiff’s product “Santa Lucia”. She produced photographs marked as Exhibit 2A, showing the Plaintiff’s and Defendant’s products placed alongside each other in a number of retail outlets that she had visited. In her statement, she stated that “Santa Maria” and “Santa Lucia” had similarities in name, label, colour, presentation and packaging which also included a similar get-up and it was with these that the Plaintiff had a problem with. She went on to state that these actions by the Defendant amounted to infringing upon the Plaintiff’s trademark and it had maliciously passed off its products as the Plaintiff’s. Further, she stated that the Defendant’s actions impugned upon the Plaintiff’s goodwill and reputation that it had cultivated over the last twenty (20) years. She also stated that, as a consequence, the price of the Plaintiff’s products had been affected and the market demand for “Santa Lucia” had diminished, although she did not provide concrete evidence to buttress such testimony.

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