the attention of the court overrides all questions of pleadings. He cited the case of Makula
International Ltd (supra) and a number of other authorities to buttress his argument.
I found very instructive the decision in the case of Blue Bell, Inc v Farah Mfg. Co., (supra)
where the facts were more or less similar to this one. The court in that case stated that:“While goods may be identified by more than one trademark, the use of each
mark must be bona-fide. Mere adoption of a mark without bona-fide use, in an
attempt to reserve it for the future, will not create trademark rights. In the
instant case, Bell‟s attachment of a secondary label to an older line of goods
manifests a bad faith attempt to preserve the mark. We cannot countenance
such activities as a valid use in trade”.
As stated in Harlsbury’s Laws of England (supra), there is bona-fide/genuine use of a trademark
where it is used in accordance with its essential function, which is to guaranty the identity of the
origin of the goods or services for which it is registered, in order to create or preserve an outlet
for those goods or services.
I completely agree with the submission of counsel for the applicant that what the respondent has
been engaging in cannot be said to be bona-fide or genuine use of the trademark. Rather, it is a
mere adoption of a mark and out rightly using it for illegal purposes. This court cannot sanction
that illegality as bona-fide use. Internationally there are efforts geared towards protecting
intellectual property rights through fighting illicit trades such as counterfeiting and piracy
because they are costly to the economy. The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) (1994) to which Uganda is a signatory is part of the
concerted global effort in fighting illicit trade. Courts of law have a role to play in this effort and
it should be the last to condone infringement of intellectual property rights.
In the case of Regina v Johnstone (supra) Lord Nicholls of Birkenhead made the following
observations on counterfeit goods:“Counterfeit goods and pirated goods are big business. They account for 5% and
7% of world trade. They are estimated to cost the economy of this country some £
9 billion each year....”
Black’s Law Dictionary 17th Edition defines counterfeit as; “To forge, copy or imitate
(something) without a right to do so and with the purpose of deceiving or defrauding”. It adds
that; “Literally a counterfeit is an imitation intended to pass for an original. Hence it is spurious
or false, and to counterfeit is to make false”.
None of the importation documents attached to the affidavit in reply showed that the respondent
was importing TECNO phones but talked of mobile phones generally. It is those unlabelled
phones that were being marked by the respondent with TECNO mark and sold to the
unsuspecting members of the public. In effect, the respondent has been counterfeiting TECNO
phones and passing them off as genuine TECNO products. Passing off is defined under section 1
of the Trademarks Act, 2010 as; “falsely representing one‟s own product as that of another in an
attempt to deceive potential buyers”.