Online Reporter
Fidelis Munyoro
Chief Court Reporter
Milborrow Animal Health Zimbabwe (Private) Limited has triumphed in a protracted legal battle against German multinational Bayer Aktiengesellschaft over a contentious trademark dispute, with the Supreme Court overturning a High Court judgment in favour of Bayer.
Delivering the unanimous decision of the superior court, Justice Samuel Kudya ruled that Milborrow’s trademark, registered in 1989, was valid and could not be expunged, while Bayer’s 2010 registration was found to have been unlawfully obtained.
Justice Kudya stated; “The sole issue is decided in favour of the appellant. Its grounds of appeal are therefore meritorious. The appeal ought to succeed.”
He further emphasised that Bayer’s trademark, identical in appearance and sound to Milborrow’s with the only difference being a hyphen, was improperly registered in violation of the Trade Marks Act.
The case revolved around two trademarks: Milborrow’s “HITET,” registered in 1989 and Bayer’s “HIT-ET,” registered in 2010. Both trademarks are applied to veterinary products, creating a significant risk of consumer confusion.
The dispute began when Milborrow failed to renew its registration by 2009, but the trademark remained on the register, as removal requires administrative action from the Registrar of Trade Marks.
Bayer proceeded to register its mark in 2010, but Milborrow later renewed its existing mark, leading to conflicting registrations.
The registrar initially ruled in favour of Milborrow in November 2022, expunging Bayer’s trademark while upholding Milborrow’s.
Bayer appealed to the High Court, which reversed the decision, expunging Milborrow’s trademark instead.
Milborrow then took the matter to the Supreme Court. Bayer argued that it had continuous, prior use of the “HIT-ET” mark dating back to 1980, supported by its registration with the Medicines Control Authority of Zimbabwe and distribution agreements.
However, the Supreme Court found these claims unsubstantiated. Justice Kudya noted the absence of critical evidence, such as invoices or receipts, to establish continuous use before Milborrow’s 1989 registration.
“The decision was not only based on the wrong facts but was plainly wrong,” he said.
Bayer also attempted to invoke Section 10 of the Trade Marks Act, which protects the rights of prior, unregistered users of a trademark. However, the court ruled that this provision serves as a defence, not a basis for expunging a registered trademark.
Justice Kudya added; “A non-registered user can only successfully invoke Section 10 if he establishes continuous use before the registration of the registered trade mark. This can only be satisfied by the production of credible and cogent evidence of prior use.”
The court also dismissed Bayer’s argument that Milborrow’s mark was invalid due to bad faith and misappropriation during a past distribution agreement.
Justice Kudya said that Bayer’s trademark was registered in violation of the law and could not co-exist with Milborrow’s.
“The registration of the respondent’s trade mark, which was identical or similar to that of the appellant, was invalid for the reason that the two could not co-exist,” he said.
“The second registration… would cause deception and confusion to the purchasing public.”
The Supreme Court’s decision restores Milborrow’s exclusive rights to its trademark and expunges Bayer’s competing mark. Costs were awarded to Milborrow.
