(b)Any territory or area subject to the authority or under the sovereignty of any country
referred to in paragraph (a), or any territory or area administered by any such country, on
behalf of which such country has acceded to the Paris Convention”.
Hong Kong as Special Administrative Region of China falls under part (b) and for that matter,
since China is a member state and signatory to the Paris Convention on Protection of Industrial
Properties 1883 on its own behalf and on behalf of Hong Kong its Special Administrative
Region; I find that Hong Kong through China accords Ugandan goods and services similar
treatment.
This court was invited to find that China and Hong Kong are two different countries for the
purpose of this application. Having found as I did above on foreign relations matters, I now find
it very difficult and quite ridiculous to again try to separate Hong Kong from China for purposes
of determining whether it is China or Hong Kong which is the country or place of origin of the
TECNO phones being sold by the applicant’s agent in the Ugandan market. I will not even
attempt to do so as it would be self defeating. In the circumstances, I instead find and rule that
China and Hong Kong are the same for purposes of determining this application.
Consequently, in conclusion on the first main issue, I am satisfied that the applicant has met all
the conditions under section 45 for removal of the trademark TECNO from the register of
trademarks in Uganda and I order that the said trademark be removed accordingly.
In view of the above findings and order, it would not really be necessary to consider the second
issue but just in case I misdirected myself on the first issue which I doubt, I will go ahead and
consider the second issue, that is, whether the respondent’s mark can be removed from the
register for non-use. Counsel for the applicant made a lengthy submission on this issue but
unfortunately it was never meaningfully addressed by counsel for the respondent.
Section 46 of the Trademarks Act, 2010 provides for removal of a trademark from the register on
the ground of non-use. Under subsection (1) (a) a trademark can be removed from the register if
the applicant who is an aggrieved person proves that the mark was registered without a bona fide
intention on the part of the applicant for registration that it should be used in relation to those
goods or services by him or her/it and that there has in fact been no bona-fide use of the mark in
relations to those goods or services by the owner up to the date one month before the date of the
application.
Similarly, the trademark can be removed under subsection (1) (b) if it is proved that at least one
month prior to the date of the application, a continuous period of three years or more elapsed
during which the trademark was a registered trademark and during which there was no bona-fide
use in relation to those goods or services by any owner.
From the evidence of the respondent’s Managing Director as contained in his affidavit in reply,
the respondent has been importing unlabelled mobile phones from China and labeling them with
the mark TECNO and selling to the public. Counsel for the applicant condemned this act as
being illegal and called it counterfeiting, plagiarism and passing off. He contended that, that was
not the bona-fide use anticipated under section 46 but rather an illegality which once brought to