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Fidelis Munyoro Chief Court Reporter

THE Supreme Court has settled the long-running trademark and trade dress infringement row pitting Cairns Foods Limited and Netrade Marketing Private Limited ruling that in Zimbabwe its unlawful to copy another person’s trademark to sell your own products with branding likely to mislead ordinary customers.

The protection of trademarks is an important factor that foreign investors look at before manufacturing or selling their products in other countries.

Cairns Foods had appealed against a High Court decision dismissing its lawsuit against Netrade, which is producing and selling a product called Royal Sun Jam, featuring the trademark and tread patterns that infringed Cairns Foods trademark.

This violated the Trade Marks Act because the name Sun Jam is a registered trademark of Cairns foods. The trade mark is 50 years old.

A three-judge panel of Justice Nicholas Mathonsi, George Chiweshe and Alfas Chitakunye in a recent judgment allowed the appeal by Cairns Foods and ordered Netrade to destroy all packaging, labels, posters, wrapping, advertising matter, documents and other material in its possession bearing the “Royal Sun Mixed Fruit Jam” which resembles Cairns Foods’ registered trade mark.

Writing the judgment for the court, Justice Mathonsi ruled that the law protects the proprietor of a registered trade mark against the use of a mark similar to or closely resembling the proprietor’s trademark.

He said the combination of Netrade ’s registered trade mark with other objects was actionable at the instance of Cairns Foods.

“The appellant (Cairns Food) was entitled to interdict the use of the logo because it creates a deception or confusion between the appellant’s jam product and that of the respondent (Netrade),” he said.

“The appeal has merit and should be upheld but the relief to be accorded to the appellant should be limited firstly to jam products and secondly to the offending logo and not the trade mark perse.”

The landmark ruling will encourage big international companies to invest in making and selling their products in Zimbabwe as their trademarks will be protected from copy cats and counterfeits.

This further strengthens the view that Zimbabwe is making strides in being a prime investment destination as it is an economy that protects intellectual property and puts value on trademark protection.

Trademarks protect consumers, from buying fake inferior goods and also protect investors who can sue for the destruction of counterfeit goods that are usually inferior and can cause harm to innocent consumers.

Many big international companies are fearful of opening big manufacturing plants in countries that do not protect trademarks and intellectual properties.

In this case, the ruling demonstrates that Zimbabwe has a strong intellectual property protection framework that will be enforced by the courts.

The High Court had rejected Cairns Foods lawsuit against Netrade, which was represented by Advocate Firoz Girach, saying that the brands and products were different.

However, on appeal, the Supreme Court reversed the judgement after it agreed with Cairns Foods lawyer Adv Tawanda Zhuwarara that the correct test to see if a trademark has been infringed was not to undertaking a forensic audit of the two trademarks but instead to look at whether the other trademark would confuse an ordinary consumer.

The court said Adv Zhuwarara was correct that the High Court was wrong because the proper test to be applied is an assessment of the impact which the Netrade’s mark would have on the average customer leisurely doing shopping at a supermarket, for instance.

The judge asked, would such a customer likely know the difference? This is so because marks are generally remembered by their general impression and not the details the court a quo looked for, said Justice Mathonsi.

“It occurred to me that had the lower court applied the proper test, it would no doubt have come to the conclusion that the notional customer encountering Royal Sun Mixed fruit jam with the visual get up of the mark used on the respondent’s logo would be deceived or confused into believing it is that of the appellant.

“The respondent cannot in all fairness suggest that the use of the words “Royal Sun” in conjunction with the various fruits and the words “Mixed fruit jam” was a mere coincidence.”

Justice Mathonsi said while no case was made for expunging the Netrade’s trade mark from the register, the evidence before the High Court established both an infringement and passing off in the use of its trademark with the fruits and the words mixed fruit jam on the logo.

The protection of trademarks the world over marks provide endless opportunities to promote and encourage innovation and ideas, which will help innovation hubs that have been created by government in the universities.