The Defendant is not the owner of the trademarks or an agent of the owner but is a trader who
imports goods from the open market in China. The goods come with the trademarks in dispute
printed on them.
Before considering the rights conferred by registration of goods in part "A" of the Ugandan
Trademarks Act 2010, the Defendant challenges the registration of the Plaintiff and has
submitted that the Plaintiff ought not to have been registered. Both parties addressed the court on
the provisions of section 45 Trademarks Act 2010. The said provision permits the court on
application in writing within seven years from registration in Uganda of the trademark relating to
goods by a person aggrieved by the registration, to remove the trademark from the Registrar if it
is proved to the satisfaction of the court that the trademark is identical with or nearly resemble
the trademark which was prior to registration in Uganda a trademark registered in respect of the
same goods, the same description of goods; or services of the description of services which are
associated with those goods or goods of that description in the country or place from which the
goods originate.
Section 45 (3) of the Trademarks Act further provides that the trademark shall not be removed
from the register in cases where the owner of the trademark consented to the registration in
Uganda of the trademark referred to; the owner of the trademark registered in Uganda proves
that he or she or his or her predecessors in business have continuously used the trademark in
Uganda in connection with the goods or services from the date before the date of the registration
of the other trademark in the country or place of origin; the Applicant does not prove that within
five years preceding the making of the application there has been bona fide use in connection
with the goods and services in the event of the trademark registered in the country or place of
origin; special circumstances of the trade or affecting the provision of the goods and services
account for none use of the trademark in Uganda within the same period; or that the trademark
registered in the country or place of origin was first registered there within the period of five
years. The Applicant is required to give an undertaking to the satisfaction of the Registrar that he
or she will within three months from making an application under this section apply for
registration in Uganda of the trademarks or registered in the country or place of origin and make
all necessary steps to complete the registration.
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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