In this particular case, there is no application by the said manufacturers or producers of China for
registration of the trademark in Uganda. I agree with the Plaintiff's submission to the limited
extent for the moment, relating to whether this issue can be raised as a defence by the Defendant.
As a matter of pleadings, it is not the Defendant’s defence that the Plaintiff's trademarks do not
enjoy protection by registration in Uganda of the Chinese registered trademark. In any case the
Defendant is not seeking to have the trademarks in issue registered. The Defendant does not even
claim to be an agent of the manufacturers who are registered in China. The question remains as
to whether as a matter of law on locus standi, the Defendant can in the circumstances challenge
the Plaintiff’s registration? The Defendant only alleged that the Defendant procures goods from
the same companies in China who are the registered proprietors of the trademark in issue.
Secondly the Defendant pleaded fraud of the Plaintiff in the registration. The Defendant contends
that the registration is fraudulent and illegal and ought to be moved from the register of
trademarks. The particulars of fraud alleged are that the Plaintiff who registered the marks in
Uganda well knowing that they were registered with the manufacturers thereof in China which is
the country of origin. Secondly the Plaintiff purports to exclude other traders from using the
mark well knowing that they have no sole distributorship licence.
Bogsch (supra) further considered the independence of trademarks and registered in different
countries under article 6 of the Convention. I again agree with the author’s analysis of the Paris
Convention to the effect that the clear principle is that the domestic law of each country applies
only in the country’s own territory. The principle is that a trademark which is registered in the
country that is a party to the Paris Convention shall be regarded as independent of trademarks
registered in other countries who are also parties to the Paris Convention. Registration of a
foreign registered trademark cannot however be refused on the ground that the trademark was
not registered in the country of origin.
In this case the Plaintiff is the registered proprietor of the trademark. The registration of the
trademark by other persons in China is not on the face of it relevant to the Defendant’s defence.
It can only be relevant in a challenge to the registration of the Plaintiff in the Ugandan Territory.
Finally I have considered the submission on the premises that the trademarks in issue are well
known trademarks protected under the Paris Convention. That question is easily answered by
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
19