Obviously the question is whether the court can in the circumstances open up the issue of
whether the Plaintiff was duly registered in Uganda in this suit. Secondly the question is what
due registration is? The Plaintiff's Counsel relied on article 6 (1) for the submission that the
conditions for the filing and registration of trademarks is to be determined in each country of the
Union by its domestic legislation. The Defendant’s arguments on the other hand are that the
Plaintiff’s trademark ought not to have been registered because they were already registered in
the country of origin which is China. Secondly he argued that the Plaintiff’s interest is in creating
a monopoly. It is not a manufacturer and buys the goods from the same market as the
Defendants. Alternatively the Defendant argued that the trademarks in issue are well known
trademarks protected by article 6 of the Paris Convention.
The question of whether the trademark in dispute is a well-known trademark cannot be
considered without adducing evidence. It can only be considered as an assumption as to whether
if the disputed trade Mark was a well-known trademark, it would enjoy protection.
The Plaintiff's Counsel raised the question of locus standi of the Defendants to challenge the
registration of the Plaintiff.
I have duly considered the Paris Convention and have been guided by a book on the subject by
Paul Goldstein in Copyright, Patent, Trademark and Related State Doctrines: Revised
Fourth Edition, University Casebook series, New York, New York, Foundation Press 1999.
In that textbook and an article by A. Bogsch, the First Hundred Years of the Paris
Convention for the Protection of Industrial Property at page 1037, the author considers
trademarks registered in the country of origin. As far as the Paris Convention is concerned, it
provides for special treatment for trademarks for which production is sought in the country
which is a party to the Paris Convention where the trademark is registered in the country of
origin. The special treatment consists of the fact that irrespective of what is provided in the
national law of the country in which the application for registration is presented; such a
trademark must be registered. The doctrine is consistent with article 6 (2) of the Paris
Convention. It only gives protection for registration in a foreign country where the trademark has
been registered in another country of the Union also referred to as the country of origin of the
goods bearing the trademark.
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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