Local diaper brand ordered off the market over trademark infringement

The products in contention. The original diaper product ‘Mami Love’ (above) and the alleged imitation ‘Vmommy Love’ (top). / Collins Mwai

The Kigali Commercial Court on Friday delivered a verdict in yet another trademark infringement case, this time involving two firms engaged in diaper production and distribution.

Trademark and brand name infringement cases in commercial courts have gone up in the recent past mostly occasion by attempts by local companies to take advantage of the fact that some international brands are not registered and protected in the country.

The latest case involved Bonjour Sanitary Products Ltd as the complaint and Iturize Ubeho Company as the defendant.

Bonjour Sanitary Products is a Chinese company that produces and distributes diapers across the regional market under several brand names including ‘Mami Love’ which was the subject of contention.

The two companies who were tussling it out in court are no strangers to each other; they have had working and business partnership previously.

Iturize Ubeho Company was a distributor for Bonjour Sanitary in the local market for a long time.

According to sources familiar with the matter, along the way, Iturize Ubeho decided to start producing their own diapers and distribute them in the local market.

They chose the brand name ‘Vmommy Love’ while the packaging resembling exactly like Bonjour’s, themed around red and blue patterns and a Caucasian infant on the cover.

This was interpreted as infringement of their trademark by Bonjour leading to a court case.

Around the same time, Bonjour which has a number of brand names, was in the process of setting up a local production plant in the Special Economic Zone to operate as a production hub for local and regional market.

After hearing the case, the Commercial court found Iturize Ubeho having infringed on the complaint’s trademark.

The court on Friday ordered them to remove all products by Iturize Ubeho bearing the ‘Vmommy Love’ branding out of the local market as well as barred them from  distribution on the local market under the brand name going forward.

The court also ordered Iturize Ubeho to refund Bonjour Sanitary Products, court fees about (Rwf 500,000), Lawyers’ fees (1,000,000) and down payment made at Customs (Rwf 3.6M) to stop entry of products while the case was in progress.

The complainant had since seized defendants imports through the customs department.

Collin Gatete, of Rukanjira Law Chambers (who was representing Bonjour Sanitary Products), said that the ruling was proof of the development in aspects such as protection of trademark infringement as Rwanda improves business conditions for local and international investors.

He noted that had the legal system not had provisions for resolution of such cases, it would have eroded the confidence of his clients who are already setting up a plant in the country.

Gatete said that infringement is often a result of unethical business practices where some try to make profits and returns by imitating or guising as a well renowned player.

“It is also important for local and international brands to protect their trademarks at the Registrar General, Rwanda Development Board as it makes solution of such cases easier when they emerge. My client (Bonjour) had his brand protected,” he said.

Going forward, Gatete noted that damages awarded for such cases by the court are often not relative to the impact of the cases.

For instance, in their case, he noted that the damages awarded and the scale of the case was not relative to the losses to the complainant and the charges incurred in the process including aspects like lawyers’ fees.

He noted that this is likely to change with time as the local stakeholders gain more experience in the resolution of such matters.

Geoffrey Mwine, the chairman and partner at Ethos Attorneys and Consultants who was representing Iturize Ubeho Company, told The New Times that they had received the ruling and would be meeting with his clients today to decide on the way forward on the matter.

The defendant has a right of appeal on such cases.  

Previously, other major trademark infringement cases include grain millers; Bakhresa Group and Azania Group, who had a protracted legal battle over ‘Azania’ brand name. Hair dye producers Minintco Ltd and Dresoceco Ltd were into their own legal showdown as did Innscor International Ltd versus Chicken Inn Ltd, Pizza Inn Ltd over a brand name (Chicken Inn and Pizza Inn).

Article 137 of the 2009 law on the Protection of Intellectual Property states that marks that could mislead the public or traders on the origin and characteristics of the products cannot be registered.