With court’s guidance and as a compromise, both parties were agreeable to the adjournment and
filing of written submissions. The applicant was to file its written submission by 15th July 2011
and the respondent by 29th July 2011. Rejoinder, if any, was to be filed by 4th August 2011. The
matter was then adjourned to 16th August 2011 for mention to ensure compliance with the
timelines and to fix a date for ruling.
On 12th July 2011, counsel for the respondent filed what was called an affidavit in rebuttal to
which was attached a write up on the relationship between Hong Kong and China printed from
the internet, and receipts and particulars of Techno phones allegedly sold by the applicant’s
agent in Uganda. This was strongly objected to by counsel for the applicant vide a letter to the
Registrar of the Court dated 13th July 2011. The grounds for objection were that first of all the
respondent did not have any right to do so as it was contrary to the well known procedure and
practice. Secondly, that it was filed late since pleadings had already been closed and timelines
given for filing of written submissions.
In reply to counsel for the applicant’s letter, counsel for the respondent vide a letter dated 13th
July 2011, justified his action by contending that court had adjourned the matter to allow filing
of the application for security for costs and a reply to the affidavit. He further contended that the
evidence contained in the affidavit was necessary for the respondent’s case and expunging it
from the record would amount to denying the respondent a chance to be heard.
I wish to point out at this stage that the records show that court allowed the adjournment purely
to enable the respondent apply for security for costs. No mention of reply to the affidavit was
even made by counsel for the respondent so court could not have allowed what was never
requested or prayed for. Since this same issue was submitted upon I will deal with it as a
preliminary issue at a later stage in this ruling.
I now turn to summarise the written submissions that were filed by both counsels in accordance
with the timelines agreed upon as indicated above. Counsel for the applicant reiterated what was
stated in the affidavit in support as summarized above and based his submissions on three main
issues, namely; (1) whether the respondent’s trademark can be removed from the register for
proof of prior registration of trademark in country of origin of the goods; (2) whether the
respondent’s trademark can be removed from the register for non-use of the trademark; and (3)
what remedies are available to the parties?
On the first issue, counsel referred to section 45(1) of the Trademarks Act No. 17 of 2010 and
submitted that in accordance with that provision, the applicant as the registered owner of
TECNO trademark in Hong Kong, China in respect of goods in class 9 which are similar to the
one in respect of which the respondent registered the identical trademark TECNO in Uganda was
an aggrieved person who rightfully brought this application.
He further submitted that the applicant had satisfied all the conditions set out in section 45 (3)
(a)-(c) and section 45 (4) of the Trademarks Act. To that end, he submitted that the applicant had
never consented to the respondent registering the trademark TECNO in Uganda and that the
respondent had not shown that it had used that trademark in Uganda in connection with phones
and related products before 2005 when it was registered in Hong Kong.