High Court Holds That Where a Design Is Not New, Its Registration Is Revoked, and No Infringement Lies, but a Rival Who Conceals Its Brand to Copy a Product’s Trade Dress Commits Passing Off
Snapshot
The High Court has held that industrial design protection extends only to ornamental features and not to those serving a primary functional purpose, and that design rights are creatures of statute with no common law existence. Applying this, it found that the shape of the gumboot’s shaft, collar, vamp, counter and instep was driven by function, leaving only the decorative contour lines protectable, and that on those lines Rida had copied Migoo’s design without variation. It nonetheless held that a design must be new under section 72(2) of the Industrial Property Act, and that registration only raises a rebuttable presumption of validity, so the burden of attack lay on Rida.
On the evidence that BATA had used the design since the 1960s, followed by Rocky, Rhino and Migoo itself, the Court found the design was not new and revoked both parties’ registrations, including Rida’s earlier one, which it also held invalid because the right to register a commissioned design belongs to the commissioner. It rejected Rida’s reliance on prior use as a defence, holding that section 40’s “prior user” defence applies to patents and not industrial designs, although prior use may ground revocation.
The Court rejected the argument that revocation was time-barred, holding that revocation may be sought within existing proceedings with no time limit, and that the 12-month limit applies only to standalone applications. With both registrations revoked, the Court held that an unregistered design has no statutory cause of action, so the infringement claim failed.
On passing off, the Court held that Migoo need not prove ownership or originality of the design, only goodwill in its trade dress, which it found established because customers asked for “Migoo” by name. It found misrepresentation because Rida deliberately moved its logo from a visible position to under the sole to make its boots visually identical, and it rejected Rida’s argument that Migoo’s failure to sue other manufacturers was fatal, holding that IP owners can pursue cost-effective, targeted enforcement. It awarded UGX 12,768,770,697 in special damages on a price-erosion computation, holding that lost profits need not be proved with mathematical precision, and UGX 4,000,000,000 in general damages for continuing harm and damage to goodwill, which it considered neither so low as to trivialise the harm nor so high as to be a penalty, together with a permanent injunction.
Finally, although it found that Migoo acted with malice and without reasonable and probable cause, the Court rejected Rida’s counterclaims for malicious prosecution and conversion, holding that a private party is not liable for the independent acts of law enforcement and that Migoo, as a mere complainant, neither instigated the prosecution nor controlled the seized goods.
FACTS
Migoo manufactured gumboots under its registered MIGOO trademark from 2012. Its director engaged Mr. Li Dong Biao to arrange a mould. In 2016, Mr. Li incorporated Rida, which sold near identical gumboots at lower prices. Rida registered its design on 28 August 2018. Migoo registered its design on 18 February 2019. Migoo sued for infringement, passing off and fraud. A police search at Rida’s factory on 13 May 2019 led to a seizure, and the Magistrate’s Court revoked the seizure order on 7 June 2019. Rida counterclaimed for malicious prosecution, trespass and conversion.
Judgment was entered ex parte against Rida on 28 June 2021 after its defence was struck out as filed late. It was set aside on 20 August 2021 (Misc. Application No. 0941 of 2021) and the suit was heard afresh.
Legal Representation
For the Plaintiff: M/s Waymo Advocates with M/s Matovu, Kateregga & Co. Advocates. For the Defendant: M/s R. Nsubuga & Co. Advocates.
Submissions of the Parties
The Plaintiff’s Submissions
Counsel submitted that registration of the design on 18 February 2019 conferred on Migoo the exclusive right to make, sell and use the design and to prevent its unauthorised copying or imitation.
He further argued that, apart from the “Rida” mark at the bottom of the sole and the use of a lighter, cheaper material, Rida’s design was identical to Migoo’s, and that Migoo had not authorised Rida to use it. The similarity therefore constituted infringement.
The Plaintiff contended that the large volumes of sales showed an established goodwill on which Rida was riding, and that Rida had deliberately designed its gumboots to be identical to Migoo’s so that they would be mistaken for Migoo’s products, deceiving or confusing consumers.
The Plaintiff also submitted that damages in a passing off action are presumed in law and need not be proved, and that Migoo’s brand quality had been eroded by Rida’s products, causing losses through reduced sales and reduced prices.
The Plaintiff maintained that Migoo’s complaint to the Registrar of Industrial Designs was made in good faith, and that Migoo could not be held accountable for the independent actions of the police taken pursuant to that complaint.
Lastly, the plaintiff asserted that Mr. Li Dong Biao was using Rida’s corporate status as a cloak or shield to perpetrate a fraud against Migoo.
For the Defendant (Rida)
Counsel submitted that Migoo’s design had been registered in error because it did not meet the criteria of novelty and originality, since the design had been in use in the gumboot industry by Bata Shoe Company Uganda Limited since 1966 and by Rocky Industries Limited since 2002, and had therefore been in the public domain for decades before Migoo began manufacturing in 2012.
The defendant argued that differences in the thickness and shine of the material and in the sharpness of the grooves were immaterial and could not establish distinctiveness, and that the Court should therefore revoke Migoo’s registration as invalid.
They contended that Rida’s design was registered on 28 August 2018, before Migoo’s on 18 February 2019, so that Rida’s design should take precedence, and that Rida was in any event protected as a prior user of the design.
Counsel submitted that Rida never passed off its products as Migoo’s, because its gumboots bore the clear trade mark “Rida” while Migoo’s bore “Migoo”, Rida’s goods were on the market before Migoo’s, and there was no evidence that Rida sought to ride on the reputation of Migoo’s product.
On the counterclaim, counsel argued that, on the basis of Migoo’s complaint, Rida’s property was unlawfully seized (moulds and plates worth UGX 492,000,000 and gumboots worth UGX 20,000,000), and that Rida’s director was maliciously prosecuted. Counsel submitted that Rida was out of production from 13 May to 10 June 2019 and thereby incurred business losses in the billions of shillings.
Court’s Findings
The Court first separated functional from ornamental features. Under section 70(2) of the Industrial Property Act, protection does not extend to features that serve solely a technical result. It found:
"the shape of its major components, the Shaft, Collar, Vamp, Counter, and Instep, is solely driven by their technical function."
Only the surface ornamentation, the linear contour lines forming inverted loops, was ornamental. Applying the "informed user" and "imperfect recollection" tests, and noting the designer's wide freedom in the decoration, the Court compared the exhibits side by side and held:
"It is evident that the defendant copied, with no variations, the design of the plaintiff."
Witnesses on both sides accepted that the boots could not be told apart without checking the logo under the sole, and the Court treated the minor differences (shine, line thickness) as the product of mould age and material quality, not design creativity.
(b) Prior user defence.
The Court held that this defence is not available against an industrial design infringement claim:
"Under section 40 of the Industrial Property Act, the 'prior user' defence applies to patents, not industrial designs."
Applying the maxim expressio unius est exclusio alterius, which means the expression of one thing is the exclusion of another, the Court held that;
the legislature’s deliberate decision to include the defence for patents and exclude it for industrial designs suggests that the defence was intended to be unavailable for industrial designs.
The Court reasoned that Parliament deliberately gave the defence to patents and left it out of Part XIII (industrial designs). It added that;
"Industrial design rights are strictly creatures of statute and do not exist under common law" .
As such general equitable defences such as estoppel, laches and acquiescence remain available .
However, prior use is a ground for revocation. Under section 72(2), a design is registrable only if new, and it is not new if disclosed to the public in Uganda by use before the filing or priority date. The evidence showed that the design had been used publicly by BATA since the 1960s, by Rocky from 2002, by Rhino from 2006, and by Migoo itself from 2012. Both Migoo's own distributor (PW2) and Rida's General Manager (DW4) conceded that others used the design first. Migoo's own manufacture six years before filing was itself a prior public disclosure.
Revocation within infringement proceedings.
The Court held that Section 90 gives two routes to revocation: a standalone application within 12 months of publication of the grant, or a request made within existing proceedings, which has no time limit. The Court found it would be wrong to bar a defendant from challenging validity:
"It would be fundamentally unjust to permit a registered owner to enforce an invalid registration while barring the defendant from challenging its validity simply because 12 months have passed since publication."
The Court accordingly revoked Migoo's registration for lack of novelty and lack of entitlement to register.
(c) Rida's earlier registration.
Although Rida filed first, which ordinarily gives priority under the first-to-file rule (sections 72(2) and 17(3)), the Court found its registration invalid on two grounds. First, it lacked novelty for the same reasons. Second, the right to register a commissioned design belongs to the commissioning party under section 18, and Mr. Li Dong Biao, who had been entrusted with the Migoo commission, had "no right to register" it for Rida. Rida's registration was also revoked.
(d) Sustainability of the infringement claim.
Since neither party held a valid registration, and the Act gives enforcement rights only to a registered owner and no unregistered design right (the earlier UK-based regime having been repealed), the claim could not stand:
"a suit premised on an unregistered industrial design lacks a statutory cause of action and is not maintainable."
Issue 1 was answered in the negative.
Issue 2: Passing off
The Court applied the "Classical Trinity" from Reckitt & Colman v Borden (Jif Lemon) [1990] 1 WLR 491 (goodwill, misrepresentation, damage), noting section 35 of the Trademarks Act preserves the action.
Goodwill.
The Court held that passing off does not require ownership or originality of the design. The plaintiff need only prove goodwill in its get-up or trade dress. Evidence that customers asked for "Migoo" by name, and that Rida's own distributors' survey linked the unbranded boot to Migoo, was enough:
"Goodwill is established, but it is limited to the plaintiff's trade dress and brand association, not the underlying design." (para 124)
Misrepresentation.
The Court found the logo relocation decisive:
"The defendant's deliberate and calculated redesign, moving its distinguishing mark from a visible to a concealed position to make its product visually identical, is strong evidence of intentional misrepresentation."
PW2 testified that many customers are illiterate and could not tell the marks apart, and that customers who asked for Migoo were sold Rida and later returned the boots. The Court accepted this as evidence of actual confusion and held that the clear branding defence failed on these facts.
Other manufacturers.
Rida argued that Migoo had not sued BATA, Rocky, Landy, Rhino or Mega. The Court rejected this, holding that IP owners "can legitimately take a cost-effective litigation strategy that focuses on specific targets" (para 146). Rida's conduct was "qualitatively different": it was deliberate and targeted at Migoo's customers.
Damage.
The Court acknowledged credible alternative explanations for Migoo's falling sales (competition, quality, pricing) but found enough causal evidence in customer diversion, direct targeting of Migoo's large customers at lower prices, a price war and forced price cuts from UGX 10,000-10,500 to 7,000-7,500 per pair.
Issue 2 was answered in the affirmative.
Issue 3: Remedies and the counterclaim
Malicious prosecution (counterclaim dismissed).
The Court found that Migoo set the criminal process in motion, acted without reasonable and probable cause, and acted with malice. It reasoned that the timing suggested "the criminal process was used as a weapon to disrupt a business competitor" , and the later revocation of the seizure order was treated as termination in Rida's favour. The claim nonetheless failed on instigation. Police acted on their own investigation and an opinion from the URSB
"As a general rule, a private party is not liable for the independent acts of law enforcement."
"The plaintiff's role was that of a complainant, not an instigator."
Conversion (counterclaim dismissed).
The entry and seizure were under a facially valid warrant, and revocation did not operate retrospectively. The continued retention of the goods after 7 June 2019 was an unauthorised exercise of dominion, but it was the police who held them, and there was no evidence Migoo directed or encouraged continued retention. The Court observed that "Mere presence during a search does not establish joint liability", since Rida's witness could not identify any Migoo "officials" or what they did.
Special damages: UGX 12,768,770,697.
Migoo pleaded a loss of UGX 3,500 per pair but proved UGX 3,000, which was not fatal. The Court accepted a "price erosion" method based on receipts, VAT returns, income tax returns and an accountant's report. It reiterated:
"Lost profits are not required to be proved with mathematical precision; an element of uncertainty is permitted in calculating special damages."
In the absence of evidence that production costs fell with prices, the whole price reduction was treated as lost profit.
General damages: UGX 4,000,000,000.
Because no evidence updated the loss from October 2021, the Court awarded a lump sum for the continuing harm and for damage to goodwill and brand reputation. A crude extrapolation gave about UGX 9.1 billion, which the Court discounted for uncertainty, to a sum that is
"neither so low as to trivialise the continuing harm nor so high as to constitute a penalty or double recovery."
Permanent injunction.
Granted, because damages alone would not stop continued passing off.
Interest and costs.
Interest was awarded at a rate guided by manufacturers' mark-up, and costs followed the event under section 27(2) of the Civil Procedure Act.
Holding
Judgment was entered for the plaintiff, and the counterclaim was dismissed with costs to the plaintiff. The final orders were
1. Both Migoo's design No. UG/D/2018/00049 (registered 18 February 2019) and Rida's design No. UG/D/2018/0004 (registered 28 August 2018) are revoked.
2. Special damages of UGX 12,768,770,697.
3. General damages of UGX 4,000,000,000.
4. Interest at 15% per annum on the special damages from the date of filing (3 May 2019) until payment in full. Interest at 6% per annum on the general damages from judgment (7 October 2026) until payment in full.
5. A permanent injunction restraining Rida, its servants, employees, agents and assigns from manufacturing, selling, importing, offering, stocking or distributing gumboots in a manner that creates confusion with the plaintiff's product or misrepresents Rida's goods as the plaintiff's.
6. Costs of the suit and of the counterclaim to the plaintiff.
Key Takeaways
1. Verify novelty before you register a design. Prior public use by third parties defeats registration, even for the first applicant.
2. A defendant sued for infringement should plead revocation as a defence or counterclaim. Time limits for standalone proceedings do not bar this route.
3. Unregistered designs carry no statutory cause of action in Uganda. Passing off remains the remedy for imitation of trade dress.
4. Courts award large sums when plaintiffs prove price erosion with financial records. Keep tax returns and sales data.
5. A complainant to the police is not liable for the independent acts of law enforcement.
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