The Paris Convention article 6 protects marks registered in a country of the Union in another
country of the Union. The marks can be registered by a person who has effective industrial or
commercial establishment.
In reply to the submissions that the Chinese manufacturers have not sought protection of the
trademark in the Ugandan territory and that the domestic law of Uganda does not afford
protection, article 6 (3) of the Paris Convention can only apply when domestic requirements have
been satisfied. That means that the consent of the registered owner's in China has been obtained.
In the absence of the consent or authorisation of any kind, due registration cannot be considered.
In those premises article 6 (3) of the Paris Convention does not support the Plaintiffs case and
the court should find so.
The action is not against the owner or agent of the owner but is against a third party who is
honestly dealing in the goods bearing trademarks of the owner. The order may not even be aware
that there is infringement on its trademarks in the Ugandan market by the Plaintiff. The Plaintiff
is inviting this court to hold that since the manufacturer does not know that the Plaintiff is
infringing, it is lawful for the Plaintiff to exclude all third parties. This would be an absurd
proposition because the conditions for not refusing the marks registered in the country of origin
or not at all favourable to the Plaintiff. The Plaintiff is an infringer whether the marks are
registered in Uganda by the manufacturer or not.
The action is not for objecting to registration and is for infringement. The Plaintiff is not entitled
to enjoy trademark protection because those works are protected in the country of origin and
ought to be removed from the register of trademarks in Uganda.
The Defendant’s Counsel further submitted that the applicable provision of the law is section 45
of the Trademarks Act which provides that subject to subsection (3) the court may, upon
application in writing within seven years from the registration in Uganda of a trademark relating
to goods by a person aggrieved by the registration remove a trademark from the register. It has to
be proved to the satisfaction of the court that the trademark is identical with or nearly resembles
a trademark, registered in respect of the same goods in the country or place of origin. A ground
for not deregistering the trademark would be that the owner of the trademark consented to the
registration in Uganda of the trademark. The Plaintiff does not show that it has in any way
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
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