(11) On hearing the appeal, the court may permit the trademark proposed, to be registered
and modified in a manner not substantially affecting its identity and the modified
trademark shall be published in the prescribed form before being registered.
(12) Where a person who gives notice of an objection or an Applicant who sends a
counter statement after receipt of a copy of a notice or an appellant, does not reside or
carry on business in the East African Community, the court or the registrar may require
him or her to give security for costs of the proceedings before the court or the registrar
relating to the objection or to the appeal, as the case may be, and if the security is not
given may treat the objection or application or the appeal as abandoned.”
The notice of objection to the Respondent‟s application has been lodged. The Respondent was
entitled to put in a counter statement to the Applicant‟s objection. Thereafter a hearing is
expected in which the registrar will determine whether the Respondent should be registered. The
Respondent would be registered in respect of the trademark it wants to trade in. In many ways
the application deals with some of the issues in this suit. The question is whether the Respondent
abandoned its application? Considering the affidavit in reply of Muqtar Ali Zafar the director of
the Respondent dated 30th November, 2016 and paragraphs 6, 7, 8 and 9 thereof, the
Respondents deposed as follows:
“6. To that effect, the Respondent applied to have the goods registered and was shocked
by the turn of events that the Applicant was objecting to its registration claiming to be
already registered as persons dealing in the same goods.” (Attached is a copy of their
notice of objection marked “C”).
7. That the Applicant fraudulently applied and obtained protection with the knowledge of
the manufacturer‟s existence and without his consent to deal in the same goods as his
agent, which consent the manufacturer had already given to the Respondent.
8. That as a result of the aforementioned fraudulent acts, the Respondent counterclaims
against the Applicant‟s registration in the main suit before the court through its lawyers.
9. That the Applicant is not the duly authorised agent of the manufacturer to deal in the
sale and distribution of the above goods and is unlawfully doing so. ”
What is disclosed is that the Respondent has counterclaimed against the registration of the
Applicant. It is recognition that the Applicant enjoys protection of its registered trademark. There
may be issues of whether the Respondent's application for registration has been abandoned. This
is not apparent from the pleadings. The counterclaim of the Respondent in the main suit is for
cancellation of the registration of the Applicant.
In the premises, as far as the Respondent applied for registration, anything related to the
application before this court is premature. Without a decision of the registrar on the objection,
Decision of Hon. Mr. Justice Christopher Madrama
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