In a recent case before Lady Justice Hellen Obura sitting in the Commercial Division of the High Court of Uganda at Kampala, Tecno Telecom Ltd. (the applicant) applied under sections 45 and 46 of the Trademarks Act 2010 to have the trademark “TECNO” registered by Kigalo Investments (the respondent) in Uganda removed from the register on grounds of proof of prior registration in a country of origin, and/or for non-use of the trademark.
The crux of the applicant’s case is that the trademark registered by the respondent was similar and identical to the trademark first registered by the applicant in Hong Kong in all aspects as it was in respect of goods in class 9 inclusive of phones and other electronic goods which constitute the main item of manufacture in China and exports to Uganda. Furthermore, the applicant adduced evidence showing that TECNO phones had been in the Ugandan market prior to registration of the mark by the respondent and so that registration was an infringement on the applicant’s right to use the trademark in Uganda.
Early on, an interesting point of contention arose between the parties concerning the status of Hong Kong vis-a-vis China for purposes of Trade mark. The applicant had registered the “TECNO” trademark in Hong Kong therefore the respondent argued that Hong Kong and China ought to be treated as distinct countries.
This is because the respondent admitted to importing unlabelled mobile phones from China and labeling them with TECNO mark for sale to the public. To support this assertion the respondent admitted into evidence several internet links containing information Hong Kong and China including, funnily enough, a link from Wikipedia: http://en.wikipedia.org/wiki/Hong¬_kong
However on this issue, the learned judge decided to do her investigations which led her to peruse the Trademarks Ordinance (Chapter 559) of Hong Kong which defines “Paris Convention” as “the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time”. Furthermore, Justice Obura noted that 20 March 1883 is when China became a member state and signatory to this Paris Convention therefore Hong Kong and China should not be considered as separate for the purposes of trademark.
Removal from register on ground of non-use
The Trademark Act of 2010 clearly states that 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.
In this regard, the court noted that the evidence of the respondent’s Managing Director as contained in his affidavit in reply was that the respondent had been importing unlabelled mobile phones from China and labeling them with the mark TECNO then selling to the public. The Court agreed with Counsel for the applicant in condemning this act as being illegal and calling it counterfeiting, plagiarism and passing off. Therefore the court concluded 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. Therefore the court said it cannot sanction the respondent’s illegality as bona-fide use.
In addition, the learned justice invoked the TRIPS Agreement which require that member states engage in protecting intellectual property rights through fighting illicit trades such as counterfeiting and piracy. In her own words, she says: “Courts of law have a role to play in this effort and it should be the last to condone infringement of intellectual property rights”
The court therefore rightly found that the trademark TECNO was registered by the respondent without a bona-fide intention to use the same and indeed there has never been any bona-fide use of it since it was registered in 2008. The court ordered that the trademark TECNO registered by the respondent be removed from the register of trademarks in Uganda.