“34. No action for unregistered trademark.
A person may not institute proceedings to prevent or to recover damages for an
unregistered trademark.
35. Passing off.
Nothing in this Act shall be taken to affect a right of action against a person for passing
off goods or services as the goods or services of another or the remedies in respect of the
right of action.”
To conclude on the question of prima facie or triable issues, there is no evidence or prima facie
fact in the affidavit in support of the application to assess that the get – up used for comparison
of products of the applicant with that of the respondent was ever registered with the registrar of
Trademarks and assigned to the applicant. This is evidence can now only be proved in the
hearing of the main suit. As far as the get –up or trade dress is concerned and only for purposes
of the injunction, I find that in the absence of evidence which may be adduced in the trial, it is
not possible to determine the question stated by the applicant for comparison of getup for
purposes of granting an injunction in the cause of action for infringement of a registered
trademark.
As far as the words or combination of words are concerned, I will for purposes of compliance
timelines state that the applicant‟s suit was filed on the 18th of May 2011. The respondent filed
an affidavit in reply by one Eddie Fredrick Kasajja and avers in paragraph 7 thereof that it
applied to register the trademark “Nice & Soft” with the registrar of trademarks. The application
is dated 12th of October 2010. The advertisement in the Gazette is dated 20th of January 2011 and
is gazetted in the Uganda Gazette on the 25th of February 2011. The application is by Nice and
Soft 2003 Investment Limited. Annexes “B” and “C” to the respondent‟s affidavit in reply sworn
by Eddie Frederick Kasajja refer.
The Trademarks Act 2010 came into force on the 3rd of December 2010 and the aforementioned
respondent‟s application is deemed to have been filed under it. Section 11 thereof requires such
an application to be published for at least 60 days. Under section 12 of the said Act a person may
within the prescribed time from the date of publication lodge an objection to the registration of
the trademark with the registrar of trademarks. A right of appeal lies to the High Court. Sixty
days from the 25th of February 2011 elapsed in April 2011 and the suit was filed on the 18th of
May 2011 outside time. Though the High Court may be taken to have unlimited original
jurisdiction, it must be asserted here that the primary authority to vet a mark as to whether it is a
mark whose registration is forbidden or not is the specialised agency in the name of the registrar
under the Uganda Registration Services Bureau Act. Moreover the crux of the matter is that the
applicant has not pleaded whether he has or has not objected to the respondent‟s application for
registration of the words “Nice & Soft”. The chamber summons avers that the respondent has
applied to register the words “Nice & Soft”. This does not by itself amount to an objection to