Art corporation Ltd v Euro Industries & Another (2764 of 2008) ((2764 of 2008)) [2009] MWHC 11 (24 April 2009);

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JUDICIARY

IN THE HIGH COURT OF MALAWI
PRINCIPAL REGISTRY
CIVIL CAUSE NUMBER 2764 OF 2008


BETWEEN:

ART CORPORATION LIMITED …………………………PLAINTIFF

-AND -

EURO INDUSTRIES & JUSSAB WHOLESALERS ……DEFENDANT

CORAM:   THE HONOURABLE JUSTICE E. B. TWEA
                  Absent, of Counsel, for the plaintiff
                  Absent, of Counsel, for the defendant
                  Mrs Gangata – Official Interpreter
                                                                                                           
                                                                                                           
R U L I N G

Twea, J
The plaintiff on 25th November, 2008 obtained an anton piller order against the defendants. The order was executed and now they seek to extend it inter – parte.

I must mention that when the case was called on 23rd February, 2009 there were three other applications from both sides. I ruled that all other applications be stood over. The matter proceeded on the inter – parte application to continue the order which the defendants contested and sought to have it varied or discharged.

The facts of this case are that the plaintiff alleged that they are sole registered proprietors of the trade mark “Eversharp” since 1991. In September 2006 they sought to renew it for a further 14 years. The defendants, on the other hand, are manufacturer and distributor of products in the same category as the plaintiff trade mark, trading under the name “Eurosharp”. The plaintiff alleged that the use of the term “sharp” is a ploy to confuse buyers and pass off the pen.

The defendants on the other hand dispute the allegations made by the plaintiffs. It is deponed that they searched at the Registrar of Trademarks, Batents and Designs and did not find any trade mark of the plaintiff product as alleged. They then applied for registration of their product in 2006. The registration was accepted. They had thus manufactured and traded their product without let or hindrance until the plaintiff came up with this claim.

It is alleged that the plaintiff was unable to find their registration because the Registrar of Trademarks, Patents and Designs had lost their documentation and consequently the completion of process was delayed. This was admitted by the Department of the Registrar of Trademarks, Patents and Designs.

As things stand, the defendants manufactured and traded under a registration valid at law. Clearly there was a lapse at the Registrar of Trademarks, Patents and Designs. From the exhibits of the plaintiff it is also clear that their registrations were not registered until 18 May 2008 and 18 June 2008 respectively. What appears to have happened was that the plaintiff having been the first on the market challenged the defendants.

The merits or demerits of the matter will be dealt with at the substantive hearing of the matter. My duty now is to determine whether or not the anton piller order be continued or not or that it be varied.

I have examined the facts. I find nothing that would support the argument that the defendants came on the market to infringe the plaintiffs trademark or design, if there was any then. They made a search and legally went into production and distribution. The plaintiffs came two years later to claim infringement. Would this entitle them to take the defendants off the market at this point in time? I do not think so. This order is discretionary. Courts should be slow to penalise where there is no apparent fault. In my view the merits or demerits of the case cannot be predicated against either party. In view of the defaults in respect of both parties and the office of Registrar of Trademarks, Patents and Designs I decline to continue the anton piller order.

I hereby order that the goods that were seized from the defendants be released and that the defendants be at liberty to produce and trade in their product on condition that they make an undertaking to give account of their manufacturing and trading every quarter. This should be taken into account when the matter is determined by the court when deciding damages for or against either party.

Costs be in the cause.


Pronounced in Chambers at Principal Registry this 24th day of April, 2009 at Blantyre.





E. B. Twea
JUDGE