In a recently delivered High Court ruling in the case of Hero MotoCorp Limited v. Esteem Motors Limited & 2 Ors Misc. Cause No. 37 of 2014, Lady Justice Flavia Senoga Anglin sitting alone in the Commercial Division directed the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB) to cancel and expunge from the Trade Marks Register four trade marks namely “Karizma”, “Hunk”, “Glamour” and “Splendor” registered by the first respondent – Esteem on two grounds namely, prior registration by the Applicant – Hero in India and non-use of the trademarks by Esteem in Uganda.
In its ruling, the Ugandan High Court cited with approval a number of rulings by Kenya’s Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). This blogpost is a brief summary of the facts and reasoning of the court in this case.
The court’s ruling considered three main issues submitted by Hero as follows:
1) Who has a valid and legal claim as proprietor of the trademarks “Karizma” (word and device) TM No. 31256, Hunk (word and device) TM No. 31266, Glamour (word and device) TM No. 31267 and Splendor (word and device) TM No. 31268 currently on the Trade Marks Register.
2) Whether Esteem’s trademarks can be cancelled on the grounds that by the date of their registration in Uganda, Hero was the bonafide proprietor in India, the country of origin.
3) Whether Esteem’s trademarks should be expunged from the Register on the grounds of non-use.
In the outset, the court noted that the trademarks in question had been registered by Hero in India between 1998 and 2007 whereas Esteem’s registration was made on 12.07.2008. In this regard the court stated that the fact that the four trademarks were registered and have been used on a wide scale by Hero in India did not by itself constitute a bar to their adoption and registration in Uganda and claiming a proprietary right in Uganda subject of course to the law of trademarks in Uganda.
The court focused most of its time on issue (2) which it seemed to suggest was at the core of Hero’s legal action. The court accepted that Hero had compiled with the procedural requirements under Section 45 of the Trade Marks Act which sets out the circumstances under which a trademark may be removed from the Register. The court accepted Hero’s contentions that Esteem and Hero are rivals in relation to the goods to which the marks apply and further that the trademarks registered in Uganda by Esteem are almost identical to the trademarks registered by Hero in India thereby creating a possibility of confusion among consumers.
The court stated that it was satisfied that Esteem’s trademarks registered in Uganda are identical with Hero’s trademarks earlier registered in India in respect of the same description of goods in India. The court also noted that there was no evidence that Esteem ever sought the consent of Hero to file and use the four trademarks in question in Uganda. Further, it was noted that Esteem’s Agent was informed, presumably by Hero, about the plans of Hero to unveil additional branches in the Uganda market. According to the court, this was an indication that Hero was the bona fide user of the the trademark in Uganda. Hero also contended that it had applied to register the trademarks in Uganda and intended to take steps to complete the registration.
On the crucial point of Hero’s prior registration in India, the court found that Hero had proved that it was entitled to the protection accorded under sections 44(4) and 45 of the Uganda Trade Marks Act by showing that the trademarks were earlier registered in India, which is a member of both the Paris Convention and the WTO TRIPS Agreement.
On the issue of non-use, the court accepted evidence that Hero had instructed investigators to find out whether Esteem was actually selling products the trade marks in dispute and whether the proprietor was physically present in Uganda. The report by the investigators showed that there were no products of Esteem in Uganda.
In light of the above, the court found that Hero was justly aggrieved by the registration of similar trade marks in Uganda and that Hero has demonstrated a genuine intention of using the same trade marks in Uganda. As a result, the court found in favour of Hero with costs.