Gold Driven Tobacco (Private) Limited v Maxiafrica Manufacturing (Private) Limited

The applicant, Gold Driven Tobacco (Private) Limited, was the proprietor of the registered trademark "JINHUANG" (registration number 1063/2010 in class 34) for tobacco and tobacco products, registered on 15 October 2010. The respondent, Maxiafrica Manufacturing (Private) Limited, was an authorized licensee of the "JINLONG" trademarks owned by Mr Wong Hung Yuen (who was also a director of the respondent). The "JINLONG" marks were registered in three variant forms between 2015-2017. Both parties manufactured and sold cigarettes targeting the Chinese community in Zimbabwe. Both trademarks were in Chinese - "JINHUANG" meaning "Zimbabwe King" or "yellow", and "JINLONG" meaning "Zimbabwe dragon". Both used the prefix "JIN" meaning "Zimbabwe". The applicant alleged that the respondent's use of "JINLONG" infringed its "JINHUANG" trademark and constituted passing off, claiming the common prefix "JIN" would cause confusion and deception in the market. The respondent's director was a former employee of the applicant, and some of the applicant's former employees now worked for the respondent.

• Whether the respondent's use of the 'JINLONG' trademark infringed the applicant's registered 'JINHUANG' trademark under section 8 of the Trade Marks Act (Chapter 26:04)
• Whether non-joinder of the registered proprietor of the allegedly infringing trademark (Mr Wong Hung Yuen) was fatal to the application
• Whether there was passing off of the applicant's goods under common law
• Whether the applicant established the requirements for a final interdict
• Whether one registered trademark holder can interdict another registered trademark holder for infringement
• Whether the prefix 'JIN' (a geographical indicator meaning 'Zimbabwe') could be monopolized by the applicant

The application was dismissed with costs on the ordinary scale.

The binding legal principles established are: (1) One registered trademark holder can sue another registered trademark holder for infringement, particularly where the registration is less than five years old and not yet conclusive under section 16 of the Trade Marks Act; (2) It is against public policy to allow monopolization of geographical indicators (such as "JIN" meaning "Zimbabwe") as exclusive trademark elements; (3) The test for likelihood of confusion or deception is whether an ordinary person of average intelligence and proper eyesight would be confused on first impression - courts should not peer too closely to find similarities and differences; (4) Rights granted by trademark registration are in respect of the mark as registered as a whole, not individual component parts; (5) Where marks share a common prefix but have distinctive suffixes and overall get-up (colors, imagery, symbols), they may be sufficiently distinctive to negate likelihood of confusion; (6) In passing off claims, the applicant bears the onus to prove goodwill with substantive evidence, not mere assertions; (7) For procedural purposes, citing an authorized licensee who is the actual user of an allegedly infringing mark is appropriate even without joining the registered proprietor, particularly where there is a close relationship (such as director/company) between them.

The court made several non-binding observations: (1) It distinguished the case from Unilever PLC & Another v Vimco (Pvt) Ltd where VIM was an invented mark rather than an existing name; (2) While finding the South African case of Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery persuasive authority, the court noted it was distinguishable on facts despite both involving geographical names; (3) The court noted that each case must be decided on its own merits when assessing likelihood of confusion; (4) The court observed that there was no basis for awarding costs on a higher scale as the application was not frivolous or vexatious and the applicant had acted bona fide in genuinely believing in its case; (5) The court noted the business connection between the parties (the respondent's director being a former employee of the applicant, and some former applicant employees now working for the respondent) as relevant context, though this did not affect the outcome.

This case is significant for Zimbabwean intellectual property law as it establishes important principles regarding: (1) the scope of trademark protection where marks share common geographical indicators or descriptive prefixes; (2) the public policy against allowing monopolization of geographical names as trademarks; (3) the proper test for likelihood of confusion - whether an ordinary person of average intelligence would be confused on first impression without peering too closely at similarities; (4) that registration of a trademark does not automatically mean its use infringes another registered mark - the marks must be assessed holistically; (5) the importance of overall get-up and distinctive elements in distinguishing marks beyond mere word components; (6) procedural aspects including that citing an authorized licensee who is actually using an allegedly infringing mark is appropriate even without joining the registered proprietor, especially where the proprietor is a director of the licensee company; and (7) the evidentiary burden in passing off claims to prove goodwill with substantive evidence beyond bald assertions.