circulated the Ugandan market prior to the date of an application by any person seeking to have
the same trademark registered.
The above principle is given emphasis by article 6 (c) (1) of the Paris Convention which provides
that in determining whether a mark is eligible for protection, the length of time that the
trademark has been in use is an important consideration. Finally the Plaintiff's Counsel submitted
that section 44 (4) of the Trademarks Act 2010 requires a reciprocal arrangement between two
countries in relation to protection of registered marks if protection is to be granted. Section 44 of
the Trademarks Act 2010 applies to owners of the disputed marks or persons having authority to
represent them. The Defendant has no legal capacity to proceed under section 44 of the
Trademarks Act.
The Plaintiff's Counsel further submitted that the African Regional Intellectual Property
Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among
African states on matters of intellectual property has the capacity to hear and determine
applications for registered trademarks in its member states who are parties to the Banjul Protocol
on Trade Marks. However Uganda is a member state of the said protocol. Section 2 of the Banjul
protocol, as amended in 2004 provides for persons seeking registration and protection in member
states to file an application either directly with ARIPO or with the industrial property office of
the contracting state. The Chinese manufacturers should have applied for protection of their
trademarks in Uganda either through the ARIPO Secretariat or in Uganda with the Uganda
Registration Services Bureau in order to enjoy protection.
The Defendant has failed to adduce any evidence to show that the goods whose Trademark it
continues to infringe bares international marks as to warrant protection in the member states of
the protocols stated herein. The absence of such evidence renders them none existent in the
Ugandan territory and gives a bona fide right to the Plaintiff to apply for registration of
trademarks that the said goods carry in the Ugandan territory. In the premises the Plaintiff prays
that the court rules in its favour on the prayers sought in the plaint.
The Defendant's submissions in reply:
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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