Issue No. 5: Whether the word Mekako is registered as an International trademark.
This issue is related to the 6th one, that is, whether the product imported by the defendants in Uganda is
under the international trademark, if any.
The plaintiff contend that rights in trademarks accrue on registration of a trademark. I agree with this
legal position. The existence of a trademark must be supported by proof of registration of the same.
The defendants did not adduce any evidence either orally or documentary to prove that the soap they
imported for sale in Uganda and which bears the plaintiff’s registered mark ‘Mekako’ was imported
under an international trademark, if any such a trademark exists. While in the WSD the defendants
contend that Mekako is an international trademark owned by Aquimpex SPA in Italy, the available
import documents, Exh. P6, show that the infringing soap was imported from China and not from Italy.
There is nothing to show that the exporter, a Chinese Company, is an authorized agent of the alleged
Italian Company. The unchallenged evidence of PW2 Ndyahikayo is that international trademarks are
trademarks registered under the international protocols like the Banjul Protocol for registration under
Africa Regional Intellectual Property Organisation (ARIPO) to which Uganda is a member state but that
in such a case, Uganda would have to be a designated country for purposes of registration of the trade
mark. I agree with her exposition of the law. In the absence of any evidence showing that the mark
Mekako used by the defendants had been registered under the relevant Protocol or that Uganda was a
designated member state for purposes of the trademark, I am unable to find that the word ‘Mekako’ is
registered as an international trademark or that the defendants’ product is under the international
trademark, if any. Whoever alleges must prove. They have failed to prove so. I would answer the 5 th
and 6th issues in the negative and I do so.
Issue No. 7: Whether the plaintiffs are entitled to reliefs claimed against the defendants.
This is a case grounded in infringement of a trademark and passing off. Going by authorities, 5
characteristics which must be present in order to create a valid cause of action for passing off are:
(i)
a misrepresentation;
(ii)
made by a trader in the course of trade;
(iii)
to prospective customers of his or ultimate consumers of goods or services supplied by him;
(iv)
which is calculated to injure the business or good will of the trader (in the sense that it is a
reasonably foreseeable consequence);
(v)
which causes actual damage to a business or goodwill of the trader by whom the action is
brought or will probably do so. See: Reckitt & Coleman Ltd –Vs- Borden Inc. [1990] 1 WLR
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