Vivon Investments (Pvt) Limited v Win-King Investments (Pvt) Limited

The applicant (Vivon Investments) was the registered proprietor of six VIVON trademarks registered in November 2014, including logo marks in colour and black and white, and word marks in classes 32 and 33. The trademarks featured a blue globe, water splashes, the word "VIVON" written in white across the globe, and red colour on the right side. The respondent (Win-King Investments) had been using a mark "VICTORIA PLUS" with a similar logo featuring a blue globe, water splashes, the words "VICTORIA PLUS" in white across the globe, and initially red (later changed to green) on the right side. Upon learning of the infringement in November 2015, the applicant engaged the respondent and instituted criminal proceedings. The parties reached an out-of-court settlement whereby the respondent undertook to stop the infringement and create a different logo, and criminal proceedings were withdrawn. However, the respondent continued to use logos that the applicant considered infringing. The applicant then brought this urgent application seeking an interim interdict under s 9A(2) of the Trade Marks Act to restrain the respondent from infringing its trademarks, passing off, and infringing copyright.

• Whether the applicant established a prima facie right to the trademarks despite the respondent's application for expungement
• Whether the respondent's use of the mark prior to registration (anterior use) provided immunity from infringement
• Whether there were material disputes of fact precluding the grant of interim relief
• Whether the applicant satisfied the requirements for an interim interdict: prima facie right, well-grounded apprehension of irreparable harm, balance of convenience, and no other remedy
• Whether the burden of proof in trademark infringement interdict applications differs from ordinary interdict applications
• Whether the respondent's mark was sufficiently similar to the applicant's registered trademark to cause confusion and constitute infringement

The provisional order was granted as prayed for, interdicting and restraining the respondent from infringing the applicant's trademarks numbers 1489/14, 1490/14, 1491/14 and 1492/14 in classes 32 and 33, from passing off its goods, from infringing the applicant's copyright, ordering delivery up for destruction of all infringing materials, and ordering the respondent to pay costs on a legal practitioner and client scale. The interim relief included immediate prohibition from trading in goods bearing the infringing packaging, direction to recall all such goods, and authorization for the Sheriff to search for and remove infringing goods from the respondent's premises.

The binding legal principles established are: (1) In applications for interim interdicts to restrain trademark infringement, the test is the same as for ordinary interim interdicts - the applicant must establish a prima facie right open to some doubt, not a "clear right" on a balance of probabilities. (2) Registration of a trademark creates an exclusive legal right in the holder to use it in respect of the goods for which it is registered. (3) A pending application for expungement does not defeat the prima facie right established by valid certificates of trademark registration; at most it casts some doubt on the right. (4) The test for infringement depends essentially on whether there is sufficient similarity which is likely to lead to confusion; "similar" means a "marked resemblance or likeness" that is "easy to recognise". (5) The balance of convenience in trademark infringement interdicts favours protecting established registered trademark rights where infringement is occurring and products are on the market. (6) A reasonable apprehension of injury requires only showing that it is reasonable to apprehend that injury will result, not that injury will follow on a balance of probabilities.

The court made several non-binding observations: (1) The respondent's application for expungement filed one day before the hearing but five days after service of the urgent application was "an afterthought designed to create a defence against the applicant's case" - if the respondent was serious about challenging validity it would have done so during prior infringement incidents. (2) The court noted uncertainty about whether the respondent intended to apply for registration of the allegedly similar foreign mark on behalf of the Denone Group, and observed that the Denone Group's Zimbabwean legal representatives were notified of proceedings but did not attend. (3) The court noted that in assessing balance of convenience, the judge is "engaged in weighing the respective risks that injustice may result from his deciding one way rather than the other" and that "the 'balance of the risk of doing an injustice' better describes the process involved" than mere convenience. (4) The court observed that neither s 37(1)(c) nor s 9E(2) of the Trade Marks Act provide for deferment of interdictory relief proceedings pending determination of an expungement application.

This case is significant in Zimbabwean intellectual property law for clarifying that the test for interim interdicts in trademark infringement cases is the same as for ordinary interim interdicts, requiring only a prima facie right open to some doubt rather than a "clear right" on a balance of probabilities. The case demonstrates the court's approach to protecting registered trademark rights and provides guidance on what constitutes sufficient similarity to cause confusion in the marketplace. It also addresses procedural issues such as the effect of pending expungement applications on interim relief and the requirement that defences based on factual matters (such as anterior use) must be properly pleaded in affidavits rather than only in legal argument. The case reinforces the exclusive rights conferred by trademark registration and the courts' willingness to grant robust interim relief to protect those rights where the requirements are met.