Copies of the translated search results are on the court record and Plaintiff's Counsel was served
with the same. Counsel prayed that the court finds that the marks were registered in China.
On the submission that trademark registration is a territorial issue and as such registration in the
country of origin may not afford a party protection in a designated country, the Defendant’s
Counsel agreed that both Uganda and China are members of the Paris Convention for Protection
of Industrial Property 1883. The Defendant’s Counsel contends that trademarks registered in one
country of the Union are protected in another country of the union.
Article 6 (1) of the Paris Convention (supra) provides that the conditions for the filing and
registration of trademarks shall be determined in each country of the Union by its domestic
legislation. The question of whether registration in one country of the Union can be registered in
different countries is determined by domestic law. In Uganda this is the Trademarks Act No. 7 of
2010. Counsel further submitted that section 44 of the Trademarks Act of Uganda protect marks
registered in the country of origin. He submitted that the trademarks in issue are already
registered by the Registrar and the issue is whether they are capable of registration or not. The
trademarks ought not to have been registered because they were already registered in the country
of origin which is China.
The Plaintiff well knowing that the trademarks relate to goods generally traded in, with selfish
interest of creating a monopoly, registered these marks in Uganda. The registration if not
cancelled by this court has the implication of preventing manufacturers in China and bona fide
traders like the Defendant from importing those products onto the Ugandan market. The Plaintiff
is not a manufacturer and without the sole distributorship or authorisation from the registered
owners of this trademarks in China cannot lawfully register them in Uganda and enjoy exclusive
rights that accrue to trademark owners.
Article 6 (1) of the Paris Convention protects well-known remarks. Traders in China know that
the marks in question belong to a particular industry in China and it is the same situation in
Uganda. Traders who procured their products from China including the Plaintiff and the
Defendant know that these trademarks belong to particular industries. The law empowers the
court to cancel the marks from the Registrar of Trademarks for reasons that they are already
registered in the country of origin.
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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