Nuvert Trading (Private) Limited t/a Triple Tee Footwear v Seadoone Investments (Private) Limited

The plaintiff had been manufacturing and selling safety shoes and boots marked as "Triple Tee" since November 2010. In October 2011, both the plaintiff and defendant submitted tender applications to supply protective clothing to Zimbabwe Electricity and Distribution Company (ZETDC). The defendant was awarded the tender by the State Procurement Board on 31 October 2013. In May 2014, the plaintiff discovered that the boots and safety shoes supplied by the defendant were similar to those manufactured by the plaintiff, including the logo and packaging bearing the plaintiff's then unregistered trademark. The defendant had ordered the shoes from Xiamen Jinsheng Industrial Company Limited in China. The defendant supplied goods worth USD 272,394.75 using the plaintiff's trademark, logos, and design without the plaintiff's consent. The plaintiff claimed this constituted passing off.

• Whether the defendant infringed the intellectual property rights of the plaintiff through passing off
• Whether the plaintiff is entitled to damages for passing off and if so, to what extent
• Whether the elements of passing off (goodwill, misrepresentation, and damage) were established

1. The defendant infringed the intellectual property rights of the plaintiff. 2. The plaintiff is entitled to damages in the amount of USD 272,394.75.

The binding legal principles established are: (1) An unregistered trademark is protected at common law through the action for passing off, as preserved by the proviso to section 6 of the Trade Marks Act [Chapter 26:04]. (2) To establish passing off, a plaintiff must prove three elements: (a) goodwill or reputation in the business; (b) misrepresentation by the defendant that leads the public to believe the defendant's goods or services are those of the plaintiff or are associated therewith; and (c) actual or potential damage resulting from the misrepresentation. (3) Goodwill can be established through evidence of sales figures and advertising expenditure. (4) A party commits passing off when it causes goods to be manufactured by a third party using another's distinctive marks, logos, and packaging without consent, even if the manufacturing occurs abroad. (5) Damages for passing off can be measured by the value of the benefit or contract obtained by the defendant through the misrepresentation, which in this case was the full tender value of USD 272,394.75.

The court observed that it could not have been a coincidence that a company in China manufactures, packages, and distributes shoes with a similar logo, website and name as a company in Zimbabwe, implying deliberate copying. The court also noted that the situation "could have been a different story if the defendant had at any stage purchased similar shoes from the plaintiff," suggesting that legitimate resale might have provided a defense. The court's comment that the defendant's claim of ignorance of the plaintiff's existence was "difficult to fathom" given both parties operated in the same sphere and participated in the same tender, while not strictly necessary to the decision, underscores judicial skepticism toward claims of innocent coincidence in passing off cases involving direct competitors.

This case is significant in Zimbabwean law as it affirms the common law action for passing off remains available even for unregistered trademarks, as expressly preserved by the proviso to section 6 of the Trade Marks Act. It demonstrates the application of the three-element test for passing off (goodwill, misrepresentation, and damage) and establishes that a party can be liable for passing off when it orders goods from a third party (in this case, a Chinese manufacturer) using another's distinctive marks and packaging. The case also illustrates that damages for passing off can be measured by the value of the contract or benefit the wrongdoer obtained through the misrepresentation, particularly in tender situations. The judgment reinforces that operating in the same commercial sphere and participating in the same tender process negates claims of innocent coincidence or ignorance.