Wakilii

Benson Hedges (Overseas) Limited v B Foto Electronics Corp [2024] UGRSB 12

Tribunal · 2024 Opposition Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark registration application filed in 2004, heard ex parte after opponent failed to prosecute for 20 years
Decision
Opposition dismissed; applicant's trademark application may proceed to registration

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Tribunal dismissed the opposition to registration of the applicant's "B & H" trademark in class 9 for photography and electronics equipment. The opponent's tobacco-related trademarks were not entitled to protection as well-known marks against dissimilar goods under Ugandan law. Protection of well-known marks is limited to defensive registration under section 47 of the Trademarks Act 2010. No likelihood of confusion arose where goods were entirely different. The opponent's failure to prosecute the opposition for 20 years constituted abuse of process.

Outcome

Opposition dismissed; applicant's trademark application may proceed to registration

Facts

The applicant, a New York company, filed trademark application UG/T/2004/039465 on 25 June 2004 to register "B & H" in class 9 for cameras, photography equipment, video equipment, computers and related electronics. On 2 November 2004, the opponent filed opposition claiming the mark would dilute its brand reputation in tobacco products marketed under various "Benson & Hedges" and "B & H" trademarks. The opposition was scheduled in September 2006 but submissions were never filed. The matter remained dormant for 20 years. When scheduled for hearing on 20 May 2024, the opponent did not appear. The applicant's advocates demonstrated service on the opponent's last known address. The Tribunal directed the matter to proceed ex parte. The opponent filed no submissions despite being given until 4 June 2024. The opponent's advocates indicated they no longer had instructions but failed to notify the Tribunal of any change in representation.

Issues

  1. Whether the opponent's mark is eligible for protection as a well-known mark under the Trademarks Act.
  2. Whether the opposition should be dismissed for want of prosecution after 20 years of inaction.

Orders

  • Opposition dismissed.
  • Costs awarded to the applicant.

Rules and key headnotes

Trademarks — Well-Known Marks — Scope of Protection — Dissimilar Goods
Under Ugandan law, protection of well-known marks is limited to defensive registration under section 47 of the Trademarks Act 2010 (formerly section 29 of the Trademarks Act Cap 217). An opponent cannot claim protection as a well-known mark to object to registration of a mark for dissimilar goods. The only remedy available is to apply for defensive registration of the mark in all classes upon satisfying the Registrar that the mark is well-known.
Trademarks — Likelihood of Confusion — Double Similarity Test
Likelihood of confusion arises only where there is double similarity: similarity between the trademarks and similarity between the goods or services in question. Where marks are similar but goods are entirely different and unrelated, no likelihood of confusion arises and registration cannot be refused on that ground.
Trademarks — Paris Convention — Domestic Implementation
Uganda domesticated Article 6bis of the Paris Convention by modifying it to limit protection of well-known marks to defensive registration only. The treaty provision was not adopted as written but adapted to fit the municipal law framework under section 29 of the Trademarks Act Cap 217 (now section 47 of the Trademarks Act 2010).
Tribunal Procedure — Want of Prosecution — Abuse of Process
Filing an opposition and failing to prosecute it for 20 years constitutes abuse of process and is prejudicial to the applicant. Although the Trademarks Act 2010 and Trademark Regulations 2023 do not expressly empower the Registrar to dismiss for want of prosecution, the Tribunal may proceed to determine the matter ex parte where the opponent fails to attend hearings or file submissions after proper service.
Tribunal Procedure — Change of Representation — Duty to Notify
Where a change in legal representation is made, a party is under a duty to notify the Tribunal in writing so that communication can be served on the new agents or advocates. Failure to notify the Tribunal of a change in representation does not hinder or delay determination of the matter and is not a ground for adjournment.

Legislation cited (9)

Full judgment

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Benson Hedges (Overseas) Limited v B Foto Electronics Corp 2024 UGRSB 12 (21 June 2024)
Source: this page presents Wakilii’s issue analysis and metadata for a publicly reported Ugandan judgment. Any AI-generated summary is marked as such. Judgment text is sourced from the Uganda Legal Information Institute (ulii.org). Wakilii is not affiliated with ULII.