In reply to this issue, learned Counsel for the Respondent submitted that the Respondent is
challenging the Applicant's ownership and registration of the alleged trademark
and replied to the Applicant's submissions as follows;
The Applicant in the first place did not follow the laid procedures of
registration of the said trademark which includes gazetting of the
trademark as required under section 17 of the Trademarks Act
2010. The Applicant did not produce any evidence of the gazette
despite the fact that the Respondent raised it as a point of law as such the
Applicant cannot allege to be the lawful registered owners of the said trademark.
The Applicant alleges to have registered their trademark on 14/6/2016 which is
way after the Respondent had been dealing in blankets bearing the logo "Z moon
purple moon" for eight (8) years with the authority from Luoyang City
Guanlinlide Blanket Factory the registered owners of "Z moon Purple moon"
trademark; and manufacturers of the said blankets as well as Bingling enterprises
Limited and JIANSGU Ouma Textile Technology Co. Ltd who are agents of the
manufacturer. Section 36 of the Trademarks Act 2010 provides for exclusive
right of use of a trademark in relation to goods subject to prior use just as in the
case of the Respondent as established under Section 41 of the Trademarks Act
2010.
The Respondent‟s Counsel submitted that the fact of prior use of "Z moon purple
moon" trademark is established in paragraphs 4 (a) and (b) of the Respondent's
written statement of defence and paragraphs 5 (i) and (ii) of the Respondent's
counter claim. Section 41 (a) of the Trademarks Act 2010 is to the effect that
the owner or registered user of a registered trademark shall not interfere with or
restrain the use by a person of a trademark identical with or nearly resembling it in
relation to goods or services; to which that person or a predecessor in title has
continuously used that trademark from the date before the use of the trademark in
relation to those goods or services by the owner or predecessor in title.
Counsel submitted that the Respondent got authority to use the registered
trademark "Z moon purple moon" which is nearly resembling the Applicant's
registered trademark "Z moon" before the Applicant's trademark was registered in
Uganda. However, the Applicant's registered trademark "Z moon" is a different
trademark from the Respondent's trademark "z moon Purplemoon" under part A
of the trademarks Act 2010. As such the Respondent should not be stopped from
using the same trademark as the first recognized user before the Applicant.
In rejoinder to this issue, learned Counsel for the Applicant reiterated its earlier submissions
and in reply to the Respondent's submissions, the Applicant further submits as follows;
Consequently it is not in dispute that the Applicant was issued a Certificate of Registration
of the said Trademark per Paragraph 4 (a) of the Plaint, Paragraph 3 of the Affidavit in support
of the Application for a Temporary Injunction, Paragraph 2 of the Affidavit in Rejoinder and the
Supplementary Affidavit in Rejoinder and Page 6, of the Counterclaim, Paragraph VI. He
contended that the issuance of the certificate of registration for the Applicant‟s trademark is
Decision of Hon. Mr. Justice Christopher Madrama
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