Chief Court Reporter
A Harare businesswoman, Leticia Kuda Mupawose, has won a trademark dispute against ONA Brands (Pvt) Ltd, after the High Court Commercial Division ruled in her favour.
Justice Sylvia Chirawu-Mugomba ruled in favour of the Ms Mupawose finding that ONA Brands had infringed on her registered trademark "FESO," resolving a contentious case that addressed trademark registration, prior use, and consumer confusion.
Ms Mupawose, the registered proprietor of the trademark "FESO" in Zimbabwe, Botswana, Mozambique and Malawi, under the African Regional Intellectual Property Organisation (ARIPO), claimed that ONA Brands had been unlawfully using the mark for hair growth products since April 2023, even while her application was pending.
She argued that ONA Brands' use of the name "FESO," coupled with similar marketing strategies and a flower design resembling her registered mark, was likely to deceive or confuse consumers.
ONA Brands countered that its products bore the words "ONA Brands," which distinguished them from Ms Mupawose's.
They argued that the word "FESO" was used solely to identify ingredients in compliance with legal requirements and that the term had long been associated with traditional uses for hair and health purposes.
Justice Chirawu-Mugomba addressed the legal implications of trademark registration under ARIPO, the descriptiveness of the word "FESO," and the likelihood of consumer deception.
The court noted that ARIPO registration has the same legal effect as registration under Zimbabwe's Trade Marks Act.
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On the defence of prior use, the judge was unpersuaded by ONA Brands' evidence, stating, "There is no information on when it started to use the name FESO on its products or where or how. The claim is a bold assertion, and in my view, it is not enough to sustain the defence of prior use."
ONA Brands also argued that "FESO" was a descriptive term and not subject to exclusive ownership.
Justice Chirawu-Mugomba agreed that the word was not an invention of Ms Mupawose, stating, "Unlike the word, 'luv,' in the INNSCOR Africa Limited vs SLICE Distributors (Pvt) Ltd and Anor, SC-43-23 that the Supreme Court found to have been an invention of the appellant, in casu, the word FESO is not an invention of the applicant. I agree with the respondent that the applicant has no monopoly over use of the word, especially in the hair products industry."
Despite this finding, the court carefully analysed the potential for consumer confusion.
Applying the principles established in the Plascon-Evans matter, the judge concluded, "In my view, a notional customer in the marketplace is likely to be confused when looking at the two marks with the inclusion of the word FESO."
The court noted evidence of actual confusion in correspondence provided by Ms Mupawose and found that the word "FESO" had acquired distinctiveness in relation to her products.
