Court has ordered garment manufacturing firm; Rida International Industry Uganda Limited to pay more than Shs12 billion in damages for infringing on its competitor’s industrial design for gumboots manufacturing.
According to the court order, Rida International Industry Uganda Limited was ordered to pay to Migoo Industrial and Trading Company Limited Shs6,589,795,284 in special damages and Shs5.5bn in general damages with interest at 15 percent per year from May 2019 till payment in full.
The Commercial Division of the High Court also issued a permanent order restraining Rida International Industry Uganda Limited and its agents or workers from reproducing industrial designs registered as per the certificate of registration in the manufacture of gumboots, importing, offering for sale and selling of the same gumboots.
The court directed that Rida International Industry Uganda Limited, a company owned by Chinese nationals to desist from reproducing the protected industrial designs or stocking of gumboots of that design for the purposes of offering them for sale or selling them.
Justice Steven Mubiru ruled that Rida International Industry Uganda Limited infringed the design of Migoo International and Trading by manufacturing and selling infringing products which have a striking resemblance in shape, configuration and pattern of the complainant’s products.
“The defendant has adopted the registered design of the plaintiff and applied it to its products as stated above with a view to cash in on the reputation and goodwill enjoyed by the plaintiff and its products manufactured with the registered design. This is a case of confusion and amounts to the defendant passing off its infringing products as those of the plaintiff with a view to encash upon the goodwill and reputation of the later,” the judge held.
He ruled that the products by Rida International Industry Uganda Limited is in direct competition with that of its original producer.
“It would thus appear that when the products leave both rival manufacturer’s gates, they enter into the same retail and distribution channels, via which they then reach the customer. The two products share same market,” the judge observed.
He reasoned: “The sum of profits per pair of gumboots which the plaintiff as owner of the infringed industrial design could have earned had there been no such infringements can be deduced from the plaintiff’s total volume of sales made over that period.”
The judge ruled that the features of gumboots in issue do not differ from that of Rida International Industry Uganda Limited in regard to shaft, the collar and the vamp among others.
On account of minimum differences between the two designs by Migoo and Rida, the court held that the differences between the two are too insignificant to create a different overall impression.
How it started
The court order resulted from a case in which Migoo Industrial and Trading Company Uganda Limited sued Rida International Industry Uganda Limited seeking for recovery of damages resulting from infringement of its industrial design, passing off and fraud.
Court heard that Migoo Industrial and Trading Company Limited is the registered owner of the trademark Migoo in respect of clothing, footwear and headgear by virtue of which it has been manufacturing and selling gumboots in Uganda since 2012.
Court documents indicate that in 2012, the director of Migoo Industrial and Trading Company Limited contacted a one Li Dong Biao to design industrial mould for the production of gumboots but to the surprise, Biao incorporated a company to manufacture identical gumboots that are of poor quality and sold at cheaper prices.
Court heard that the act of Rida International Industry Uganda Limited undercut the sales of Migoo Industrial and Trading Company Limited thereby causing confusion in the market and loses.
However, the accused company; Rida International Industry Limited vainly argued that its industrial design is different from that of the complainant and hence did not in any way infringed on its trademark.