“PANASUPER” Trademark Fraudulently Registered in Uganda: Judgment in Muse Af Enterprises Co. Ltd v. Billen General Trading Ltd & 2 Ors

PANASUPER PANASONIC TRADEMARK

This blogger has come across a recent judgment from Uganda’s Commercial Court in Muse Af Enterprises Co. Ltd Vs Billen General Trading Ltd & 2 Ors [2015] UGCOMMC 88. In this case, Muse filed an application for registration of the PANASUPER trademark in Uganda on 3rd August 2006 but the application was opposed by Matsushita Electronic Industrial Co. Ltd of Japan, the registered proprietors of Trademarks No. 25731 and 28536 PANASONIC. Since the registration of the trademark had been opposed, Muse requested a power of attorney from Linyi Huatai. The PANASUPER trademark was subsequently registered after URSB delivered a ruling disposing of the opposition of the trademark.

Later, Muse filed suit against Linyi Huatai and their local agent Billen for trademark infringement. However Linyi Huatai claimed that Muse had fraudulently registered the PANASUPER trademark in its own name. Linyi Huatai asked the court to cancel the registration of PANASUPER and claimed damages from Muse.

In a well-reasoned judgment, the court found in favour of Linyi Huatai and stated as follows:

“In conclusion of this matter, based on the above wealth of authorities and the true construction and effect of the power of attorney, I find that the donee by registering the trademark in its name exceeded the authority granted to it by the power of attorney. The question is therefore whether it did so fraudulently. (…) I wish to point out from the onset that the plaintiff applied for registration of the suit trademark way before the power of attorney was granted to it. The application was filed on 3rd August 2006 and according to the evidence of PW1, when the registration was opposed the plaintiff requested for a power of attorney to formalise the authority. (…) According to paragraphs 1 & 3 of the SWS, the plaintiff’s relationship with the 2nd and 3rd defendants started in 2006 when its managing director met a one Mr. Shore at the Canton Trade Fair in Guangzhou (China) and they had discussions in which they agreed that the plaintiff would own PANASUPER trademark in Uganda. The said Mr. Shore acted for the 2nd and 3rd defendants who according to paragraph 2 of the SWS had various brands of batteries displayed at their stalls including PANASUPER, PAIR TIGER, POWERSHIBA and POWER FLASH. It is the plaintiff’s evidence that its application for registration of the suit trademark in Uganda was based on the discussions and agreement it had with Mr. Shore at a trade fair in China. No document was tendered in court as proof of that agreement, suggesting that the agreement, if any, was oral at least up to the point when the application was filed. Subsequently, there was a purported formal agreement in the form of an OEM Agreement whose fate this court has already determined herein above. If the application for registration had not been objected to, the plaintiff would have quietly registered the 3rd defendant’s trademark without any formal authority from it. The power of attorney was only got because of the objection.”

“…it is clear that the relationship between the plaintiff and the 2nd and 3rd defendant as relates to the suit trademark was that of agent–principal. The plaintiff therefore could not purport to apply for registration of the said trademark in its name as it did on 3rd August 2006 without any express authority from the registered proprietor. The power of attorney that was sought for and issued later was meant to ratify an act that was done dishonestly to have an unfair advantage over the registered proprietor and manufacturer.

This dishonest intention came out clearly when the plaintiff initially sued the 1st defendant for allegedly infringing its trademark and passing of its goods as the plaintiff’s when it knew very well that the 1st defendant was the agent of the 2nd and 3rd defendants who are the owners of the said trademark in China where the goods are also manufactured from and just shipped to Uganda. The Plaintiff also knows very well that it does not manufacture PANASUPER batteries and so the sole purpose of registering that trademark in its name would only be the human ingenuity of its managing director, who personally met the representative of the 2nd and 3rd defendants, devised to unfairly take advantage of the situation and block their PANASUPER batteries from being imported to Uganda by any other dealer.”

A copy of the judgment is available here.

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