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Issue 1 (b)
Whether the Plaintiff’s action infringed the 2nd and 3rd defendant’s trademark?
It is important to note from the outset that counsels of both sides did not address court on this
issue. In fact counsel for the plaintiff did not even include it among the issues and yet it was
agreed upon. That notwithstanding, generally in intellectual property law infringement is defined
as, “an act that interferes with one of the exclusive rights of a patent, copyright or trademark
owner.” More specifically, “trademark infringement means the unauthorised use of a trademark
or of a confusingly similar name, word, symbol, or any combination of these in connection with
the same or related goods or services and in a manner that is likely to cause confusion,
deception, or mistake about the source of the goods or services.” (See Black’s Law Dictionary
8th Edition.)
Based on the evidence and submissions discussed under issue 1 (a), it is the finding of this court
that the plaintiff fraudulently registered the 2nd defendant’s trademark with the intention of
infringing it. But I must hasten to add that the 2nd and 3rd defendants cannot sue for infringement
because it is not the registered proprietor of the trademark in Uganda. Under section 36 of the
Trademarks Act 2010 exclusive right to the use of a trademark only accrues to and the right to
sue for infringement of the same is only conferred to the registered proprietor under the Act.
Section 34 of the Trademarks Act 2010 whose head note is, “No action for unregistered
trademark” also provides thus:
“A person may not institute proceedings to prevent or to recover damages for
unregistered trademark.”
Section 35 however allows action to be brought for passing off goods or services as the goods or
services of another.
For the above reason of non-registration of the suit trademark in Uganda by the 2nd and 3rd
defendants, I find that under the Trademarks Act 2010 the issue of the plaintiff infringing the 2nd
and 3rd defendants’ trademark does not arise much as the plaintiff fraudulently registered the
same in its name. Even if the action were to arise there would not be any evidence before this
court to prove the infringement on a balance of probabilities since it is clear from the evidence
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