IN THE HIGH COURT OF TANZANIA

(COMMERCIAL DIVISION)
AT PAR ES SALAAM

COMMERCIAL CASE NO. 76 OF 2005

BATA LIMITED CANADA.......... PLAINTIFFS/APPLICANTS

VERSUS
BORA INDUSTRIES LIMITED.... DEFENDANTS/RESPONDENTS

RULING

Date of Submissions - 1/9/2006

Date of Ruling - 8/9/2006

MASSATI, J:

Along with the suit the Plaintiff filed an application

for temporary injunction: -

“...against the Respondents, its agents servants and

workmen restraining them from manufacturing
distributing and selling of slippers with the mark
“Bora” pending determination of the main suit”.

The Respondent resists the application. The application

had to be determined and it was heard by way of written
submissions.
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The application is supported by the affidavit of one

ALLAN NJOROGE. According to the affidavit, the
Applicant is the registered proprietor in Tanzania and
throughout the world of the Trade mark (BATA). That the
Applicant has traded extensively in that trade mark in
Tanzania and East Africa and has thus acquired a
substantial goodwill and reputation with that trade mark.
It is further deponed that since June 2005, the
Respondent has begun to sell in Tanzania, slippers in a
get up similar to that of the Applicant. The deponent
then concludes that according to advice from his lawyers,
this constitutes infringement of the trade mark and
passing off, which causes, and will continue to cause
damage to and irreparable loss to the Applicant unless
the Respondent is restrained by an injunction. In a reply
to a counter affidavit taken out by a Mr. Edwin Kidiffu,
the Applicant repeats these averments, and further
imputed that the Respondent’s Trade mark “BORA” is
identical in design and get up to that of “BATA” and that
it was not true that the Respondent has a monopoly in
the Tanzanian market on shoes, slippers and rubber
products. The Applicant also joins issue with the
Respondent on the question whether the Applicant’s
failure to compete in the Tanzania market was the sole
cause of damage to the Applicant’s reputation.
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In support of the application, Dr. Twaib, learned

Counsel for the Applicant submitted that the principles
applicable in the grant of temporary injunctions as set
out in E.A. INDUSTRIES LTD VS TRUFFOD LIMITED,
[1972] E.A. 420, GIELLA VS CASSMAN BROWN & CO
LTD [1973] E.A. 358 and ATILIO VS MBOWE [1969]
HCD n. 284, have been met. On the principle that the
Applicant must establish a prima facie case he submitted
that although it was held in AKTIE BOLAGET
JOKO PING VULCANINDSSTRICKSPA
BRIKSAKTIEBOLAG VS EAST AFRICAN MATCH
COMPANY LTD [1964] E.A. 62 that the burden of proof
in the case of an infringement of a trade mark was on the
Plaintiff, it is well settled that a prima facie case is
established by looking at the plaint and its annexures.
He said this did not mean that the court should declare
the Applicant a winner. He drew to his support the
reasoning of the Court of Appeal in CPC
INTERNATIONAL INC. VS ZAINABU GRAIN MILLERS
LTD CAT Civil Appeal No. 49 of 1999 (unreported) and
the decision of this court in Commercial Case No. 278 of
2002 (unreported) - BATA LIMITED CANADA VS OK
PLAST LIMITED; and TANZANIA TEA PACKERS LTD
VS THE COMMISSIONER OF INCOME TAX AND
ANOTHER Commercial Case No. 5 of 1999 (unreported).
He concluded that in the present case, the pleadings
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together with the annexures presuppose the existence of

a prima facie case.

On the second principle that the Applicant must

establish whether the court’s interference was necessary
to protect the Applicant from suffering irreparable loss,
Dr. Twaib, submitted that, through the affidavit, the
Applicant has established the acquisition of goodwill in
the business of selling slippers, and has also established
that the Respondent has begun to sell similar goods. He
said this was an infringement and an assault on the
goodwill. Relying on the observations of Kalegeya J, in
BATA LTD VS OK PLAST LTD’ case, the learned
Counsel submitted that loss of goodwill was irreparable.

On whether the application has met the balance of

convenience test the learned Counsel for the Applicant
submitted that with over 60 years spent by the Applicant
in promoting BATA products, the Applicant stood to lose
more than the Respondent who simply infringed the
trade trade mark and get up, and especially now that the
Respondent’s products are still in the market.

On the premises, the learned Counsel submitted

that the Applicant deserved the prayers sought.
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As hinted above the application was vehemently

opposed by the Respondent. Mr. Rajesh Gunamal, filed a
19 paragraph counter affidavit. According to Mr.
Gunamal the Applicant is not registered propietor of the
“BATA” trademark in Tanzania, but that the Respondent
is the registered proprietor of the BORA Trade Mark. The
Respondent also denies that the Applicant is in exclusive
use of the goods with the trade mark “BATA”. According
to Mr. Gunamal the Respondent acquired the trade mark
“BORA” from its predecessor, Tanzania Shoes Company
Limited who had been the registered proprietor of BORA
trade mark since 1967. And so the trade mark was well
known in Tanzania and it was not true that the device
was used to mislead the trading and general public, but
on the contrary, the use of the trade mark was bona fide.
In conclusion, Mr. Gunamal depones that the Applicant
has not shown any grounds to support the orders sought
and prays for the dismissal of the application.

In support of the counter affidavit, Mr. Duncan,

learned Counsel for the Respondent submitted by first
criticizing the citation of s. 95 and Order XLIII rule 2 of
the Civil Procedure Code saying they are irrelevant and
superfluous respectively, and the phrase “any other
enabling provisions of the law” as “useless
embellishment”. Quoting extensively, from RICHARD
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KULOOBA’s “PRINCIPLES OF INJUNCTION” OUP

Nairobi [1987] Mr. Duncan, submitted at length on the
nature of the relief of temporary injunctions, before
restating the principles on which injunctions could be
granted by courts.

In addition to the cases already cited by Dr. Twaib,

Mr. Duncan cited NOORMOHAMED JAN MOHAMED VS
KASSAMALI VIRJI MADHANI [1953], 20 EACA 8, JOHN
SKIPPER AND NEIL ARCHIBALD MC DUFF VS MBL
INTERNATIONAL Civil Case No. 262 of 1988
(unreported) and AMERICAN CYNAMID CO VS
EHTICON LTD [1975] All ER. 504. He said according to
the AMERICAN CYNAMID case in order to succeed in an
application for temporary injunction, the Applicant has to
show: -

(1) That the Application is not frivolous or

vexatious,

(2) That there is a real question to be tried; and

(3) That there is a real prospect that he would

succeed in his claim.
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He said these principles are common law principles

which are not binding on this court, but that he could tie
them within the principles stated in ATILLO VS MBOWE
case. He also agreed that in so doing the court is only to
look at the pleadings. Applying these principles, Mr.
Duncan, submitted that since the Applicant has not
shown that it is the registered proprietor of the BATA
trade mark, as opposed to the Respondent’s BORA trade
mark, the Applicant has not made out a prima facie case.
Turning to the second principle that the application must
demonstrate a likelihood of success, Mr. Duncan
borrowed the arguments in HUBBARD VS COSPER
[1972] 1A11 ER 1032 that this means the applicant must
present an arguable case that the Defendant’s act is
wrongful. But in the present case the Applicant has not
shown that the “BATA 1” Trade Mark was registered in its
name. And under the law (s. 30 of the Trade Marks Act)
precludes unregistered users of the trade mark from
instituting proceedings to prevent or recover damages.
On the other hand the Respondent is the registered
owner of BORA Trade Mark. Thus it cannot be said that
the Respondent’s acts are wrongful. Therefore the
Applicant has failed to disclose an arguable case. On the
third principle of balance of convenience, the learned
Counsel, submitted that since the Respondent has
lawfully acquired the trade mark BORA which is well
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known in the country and since it is protected under s.

50 (1) of the Trade and Service Marks Act, and since the
Applicant did not oppose the registration of BORA Trade
Mark under s. 27 of the Act, the Applicant is now
estopped from complaining to the court after it has now
actually applied for rectification of the register. So, this
means that the Applicant was/is aware that there is
adequate protection under the Trade and Service Marks
Act, and so the Applicant should not have come to this
court. In support for this proposition, the learned
Counsel cited BIR SINGH VS PARMAR [1971] E.A. 209.
He said the Respondent stands to suffer more damages
by granting the injunction, than by not granting it. He
said this was so, because the Respondent has dominated
the market since 1967, and the Applicant has failed to
compete, and so does not suffer any damages because of
the Respondent’s acts. In conclusion, Mr. Duncan
submitted that on all fronts, the Applicant has failed to
demonstrate that it is entitled to the orders sought. So
he prayed that the application be dismissed with costs.

In reply Dr. Twaib, first attacked the manner in

which the Respondent raised some preliminary objections
against the application. He said, in practice this should
have been preceded by a notice. In support he cited my
early decision on an application for security for costs in
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this same case. Therefore he submitted that the said

arguments should be ignored.

On the substance, Dr. Twaib submitted that it was

not true that BATA Trade Mark was not registered,
because it is: He said, even if it was not, injunction would
still lie to prevent the Respondent from passing off the
Applicant’s goods as hers. He said, statutory laws such
as the Trade Marks Act, are narrower than equity; and
that common law rights and equity such as passing off,
are recognized and protected in law by way of issuance of
injunctive orders. For this, he cited KULOBA’S
PRINCIPLES OF INJUNCTIONS (op cit).

Restating the principles of granting injunctions in

Trade Mark cases, Dr. Twaib borrowed a passage from
WOODROFFE LAW RELATING TO INJUNCTION WITH
MODEL FORMS OF PLAINT AND APPLICATIONS,
[1992] 2nd REVISED AND ENLARGED EDITION at p.
306, that, injunction will issue where it is -

“ ascertained that there is such a resemblance as

that ordinary purchasers purchasing with ordinary
caution are likely to be misled. ”
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He submitted that from the pleadings and the

annexures, one would easily see that the slippers are
deceptively similar. Thus, a prima facie case has been
made out, and that the Respondent has not countered
the Applicant’s case at all. Borrowing again from
WOODROFFE (Supra) the learned Counsel picked the
following passage from p. 312:

“Once the Plaintiff has established that he has got a

prima facie case in respect of same and similar goods
he would be prima facie entitled to ad interim
injunction and heavy burden would be upon the
Defendant to prove that the Plaintiff should not be
granted an interim injunction. ”

Dr. Twaib went on to submit that the Applicant has

managed to raise triable issues. He said at this stage, it
is not justifiable to attack the Applicant’s case. He
referred this court to a passage in the speech of Lord
Diplock in the AMERICAN CYNAMID CO case (Supra)
that:

“It is no function of the court at this stage of the

litigation to try to resolve conflicts of evidence on
affidavit as to facts on which the claims of either
party may ultimately depend nor to decide difficult
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questions of law which call for detailed argument

and mature consideration. These are matters to be
dealt at the trial. ”

He went on to reiterate his earlier submission that

loss of goodwill is irreparable. On the other hand, the
Respondent’s loss could be atoned to by way of damages,
and so, concluded the learned Counsel, the Applicant
was entitled to the orders sought. Dr. Twaib has also
annexed some prints of the slippers of BORA and BATA
to his submission. The learned Counsel then asked the
court to “look at the two slippers in issue” so that it
notices how deceptively similar they are.

Let me begin with points of procedure raised in the

submissions of the learned Counsel. Dr. Twaib, learned
Counsel for the Applicant has complained that the
Respondent’s Counsel has raised preliminary objections
on points of law without notice. That is a valid
observation. I stand by my position explained in my
previous ruling on security for costs that it is more
decent if objections on points of law would be preceded
by notice. I would thus ignore the points raised by Mr.
Duncan especially as they do not affect the jurisdiction of
this court. Next, Counsel must be reminded that
submissions are meant to be confined to legal
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arguments, and not be used as avenues for introducing

evidence. If authorities are necessary I would cite
MORANDI RUTAKYAMIRWA VS PETRO JOSEPH [1990]
TLR 49 where the Court of Appeal of Tanzania held that
submissions made by a party are not evidence. And on
numerous occasions, this court has held that any
evidence introduced via written submission is
expungable (See VETA V GHANA BUILDING
CONTRACTOR, Civil Case No. 198 of 1995 DSM
(unreported). Similarly in the present case, I would
expunge the annexures annexed to the Applicant’s
Rejoinder submission.

Having said so, I think the learned Counsel are all

at one on the principles applicable in the grant of
injunctions. Just to recapitulate, the accepted principles
are: -

(i) The Applicant must demonstrate a prima facie

case.

(ii) That the applicant has a legal right and the

court’s interference is necessary to protect it.
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(iii) That on a balance of convenience the Plaintiff

would suffer more hardship if the injunction is
not granted than would the Defendant, if the
order is granted.

Beginning with the last principle, I agree with Dr.

Twaib that, on the authorities, it is now clear that loss of
goodwill is irreparable. Therefore on that score, I agree
with him that if the Applicant has a goodwill on the Trade
Mark BATA the balance of convenience would be in
favour of the Applicant.

Next, since the other remaining principles are

related, I will tackle them together. Whether a prima
facie case exists depends, in my view, on whether the
Applicant has a legal right to protect to warrant the
court’s interference. I also agree with the learned
Counsel that a prima facie case is established if the
Applicant can show that his claim is not vexatious or
frivolous and that it raises serious questions to be tried.
And that, at this stage the court cannot go into a detailed
analysis of the affidavit evidence of the parties and
attempt to decide difficult questions of law or facts.
There is also no doubt that at this stage the court would
be guided by the pleadings.
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Appling the above principles, I have no doubt in my

mind that looking at paragraph 4 of the plaint the
Applicant alleges that it is the registered owner of the
BATA Trade Mark. And this is borne out by the
Certificate of Registration of the Trade Mark and its
renewal (Annexure BATA 1). According to this Certificate
the Trade Mark was registered on 9th May 1946. So it is
true that BATA Trade Mark is now 60 years old in
Tanzania. And on 27th May 2002 this was renewed to be
valid for the next 10 years. On the other hand, it is also
true that BORA Trade Mark was registered on the 3rd
July 1968. This is borne out by the Certificate of
Registration attached to the Written Statement of Defence
(Annexure Bora Defence I). The defence also attached to
the said defence as Annexure BORA Defence 2 trade
marks registered on 24 March 2005 as pleaded in
paragraph 8 of the Statement of Defence. In reply, the
Applicant has alleged in paragraphs 9 and 10 of the
Reply to the Written Statement of Defence, that the
registration of the Trade Mark in question was not done
in good faith, and that there are now proceedings to
challenge that registration pending with the Registrar of
the Trade Marks. It is further alleged by the Applicant in
paragraph 10 of the Reply that the Defendant’s
Certificate of Registration is not associated with Trade
Mark No. B 1777 earlier given to the Defendant, and that
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the new registration is associated with Trade Mark No.

Bl 1777 a trade mark in a different class.

The above allegations are serious ones, and cannot

be resolved at this stage of the suit, but they are
sufficient to establish that the Applicant has made out a
serious question to be tried and that he has a legal
interest to protect to warrant the court’s interference,
notwithstanding that the Applicant did not attach the
alleged registered trade mark as Mr. Duncan has
attempted to argue.

On the premises I am inclined to grant the

application. The Respondent, its, agents, servants and
workmen are temporarily restrained from manufacturing,
distributing and selling slippers with the mark “BORA”
during the pendency of this suit. However this order will
be valid for 6 months from the date of this order, or up to
the determination of the suit, whichever is earlier. Costs
shall be costs in the suit.

Order accordingly.
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S.A. MASSATI

JUDGE
13/9/2006

1 Certify that this is a true and correct

2,908 w°td® ot the originai/order Judgement KuUing
Sign_____________________ ___ ________
Registrar CommerciJ Court Dsm.
Date__... H _____