Landmark Zimbabwean case on trademark infringement

Insights from the Zimbabwean Supreme Court case of Innscor Africa Limited v Slice Distributors (Pvt) Ltd and Registrar of Deeds SC 101/23

Introduction

Without a doubt, this was one of the biggest cases on trademark infringement in the Zimbabwean jurisdiction. These are the facts of the case below and the deliberations by the court.

Case summary

This was an appeal against the High Court decision under case number HH06/23 by Justice Chirawu-Mugomba, wherein the court dismissed the appellant’s claim for an interdict against trademark infringement by the 1st Respondent. The issues for determination before the court were;

i) whether the 1st Respondent infringed the Appellant’s registered trademark number 1070/2006 in any way?

ii) Whether the 1st Respondent passed off any of its products as those of the Appellant as alleged or at all?

Ultimately the questions were if there was an infringement or passing off and what are the remedies?

The grounds of appeal brought forward by the Appellant were namely, that the court a quo (High Court) erred at law by failing to find that the 1st Respondent’s use of the term ‘luv’ in the phrase ‘I luv it’ together with the device of a chicken in a similar color scheme in its logo when marketing its products is an infringement of the Appellant’s trademark.

In addition, the Appellant alleges that the court a quo erred by failing to properly apply the legal test related to trademark infringement and not making an evaluation against a contextualized background.

Furthermore, another ground of appeal is that the court a quo misdirected itself by concluding that there was no evidence of passing off and disregarding the evidence from the Appellant’s customers that confirmed the similarities between the respective trademarks.

Findings of the court

The court declared that a court dealing with a claim for trademark infringement ought to be guided by looking at the general impression given by the appearance of the mark. The court said to consider the ‘wholesome look at the appearance of the mark.’

The court allowed the appeal to succeed in part by confirming ground one of the appeal and it was decided that Appellant’s registration of the mark entitles it to the exclusive use of the word ‘luv.’

The Supreme Court dismissed the appeal on the ground of passing off and it agreed with the finding of the court a quo. The court held that the pre-requisite for passing off is to establish proof of reputation and that the Appellant needed to produce oral evidence that it ‘had acquired a repute and where, as a result of this, use by others resulted in a deception which will cause injury to the good will enjoyed by the plaintiff.’ The claim for passing off was dismissed and there was no order as to costs.