Property Organisation (ARIPO) to which Uganda is a member state. Uganda will have to be a
designated country for purposes of registration of the trademark. In the absence of registration
under the Banjul protocol the trademark could not qualify as an international mark.
The Plaintiff's Counsel contended that the Defendant has not adduced any evidence to prove that
an application was filed to have it trademarks registered as international mark and offered
protection within the Ugandan territory.
The submission that section 44 of the Trademarks Act 2010 of Uganda affords protection to
marks registered in the country of origin, section 44 of the Ugandan Trademarks Act emanates
from article 6 quinquies of the Paris Convention. It provides that every trademark duly registered
in the country of origin should be accepted for filing and protected in other countries of the
Union subject to the reservations indicated in the article. The reservations include that they are of
such a nature as to infringe rights acquired by third parties in the country where protection is
claimed. No protection against them can be afforded to the trademark registrations from China
because doing so would amount to infringement of the Plaintiffs rights as the registered
proprietor of the mark. Until the Plaintiff's trademarks are expunged from the register, it still has
a valid claim and priority in the Ugandan territory over and above any other registrations in
foreign jurisdictions including those in the country of origin.
Additionally section 44 (1) of the Trademarks Act 2010 is subject to subsection 3 which sets out
a host of conditions that must be met before such protection is accorded. There must be a notice
of objection. Secondly there has to be bona fide use of the trademarks by the manufacturers in
the Ugandan territory prior to the application. There has to be proof of prior registration in the
country of origin. There must be proof of registration within three months from the date of
opposition. There must be reciprocal arrangement of protection between the two countries. The
Defendant in this suit does not meet any of the conditions afforded protected under the above
section. It is only the owners of the goods in the country of origin who have locus to proceed
under section 44.
The Plaintiff’s Counsel further submitted that only the manufacturers or their authorised legal
representatives have a legal right to proceed and seek legal remedies under the provisions of the
law.
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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