Wakilii

Crocs Distributors Limited v Crocodile International (PTE) Limited (Miscellaneous Cause 67 of 2022)

High Court · [2024] UGCOMMC 94 · 2024 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of trademark registration under Section 46 of the Trademarks Act, 2010
Decision
Trademark registration cancelled; Applicant free to reapply for registration

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that a trademark registered without bonafide intention to use it in relation to the specified goods, and not used for over 23 years, should be cancelled. The Respondent registered the CROCODILE mark for stationery and writing instruments but never marketed such products in Uganda, had no place of business in Uganda, and failed to respond to the application. The registration was cancelled under Section 46 of the Trademarks Act, 2010. However, the court declined to grant an injunction as that would pre-empt the Registrar's determination of the Applicant's trademark rights.

Outcome

Trademark registration cancelled; Applicant free to reapply for registration

Facts

The Applicant, a manufacturer of polythene products, applied to register the "CROCS" name and crocodile logo as a trademark in class 16. The Registrar rejected the application on 28 June 2022 due to a similar mark "CROCODILE" registered by the Respondent on 31 July 2000 for stationeries and writing instruments. The Applicant's market investigation revealed no stationery or writing products bearing the Respondent's CROCODILE mark in Uganda; the Respondent's website showed it used the mark for clothing. The Respondent, a Singapore company, had no place of business in Uganda and was served by post in Singapore on 9 February 2023. The Respondent did not file a reply. The registration had existed for over 23 years without evidence of use in relation to stationery or writing instruments in the Ugandan market.

Issues

  1. Whether the Respondent's registration of the "CROCODILE" trademark on 31 July 2000 should be cancelled on grounds of lack of bonafide intention to use and non-use for a continuous period exceeding three years.

Orders

  • An order directing the Registrar of Trademarks to cancel trademark registration UG/T/1993/017885 "CROCODILE" (Word and Crocodile Logo) as of 31/07/2000 in class 16 in the names of Crocodile International (PTE) Limited.
  • Costs of the application awarded to the Applicant.
  • Application for injunction restraining use of the mark declined.

Rules and key headnotes

Trademarks — Cancellation — Lack of Bonafide Intention to Use
A trademark registered without a bonafide intention to use it in the course of trade in relation to the goods or services for which it is registered is liable to cancellation under Section 46(1)(a) of the Trademarks Act, 2010.
Trademarks — Cancellation — Non-Use for Continuous Period
Where a registered trademark has not been used in a bonafide manner in relation to the goods or services for which it is registered for a continuous period exceeding three years, the registration is liable to cancellation under Section 46(1)(b) of the Trademarks Act, 2010.
Trademarks — Use it or Lose it Principle — Rationale for Protection
Trademark protection is not intended to enable a person to stack up registered trademarks and prevent others from using them while making no effort to use them. A registered trademark must actually be used to identify and distinguish goods or services on the market; it is not a trophy to be stored for future sentimental admiration or cunning profiteering.
Trademarks — Use in Relation to Registered Goods or Services
For an owner of a trademark to be said to have "used" the mark, the mark must be used in relation to the specific goods or services for which it was registered. Use of the mark in relation to different goods or services does not satisfy the requirement of bonafide use.
Judicial Review — Orders Directing Statutory Bodies — Right to Fair Hearing
Where an applicant seeks a court order directing a statutory body to exercise its statutory mandate, it is advisable to join that statutory body as a party to guarantee the right to a fair hearing for all key stakeholders and to enable the court to benefit from the technical expertise of the statutory body.
Unopposed Applications — Inference from Failure to Respond
Where a party is duly served with court process and fails to respond, the inference to be drawn is one of acceptance or admission. However, the court must still examine the application to ascertain whether there is legal justification for the orders sought to be granted.

Legislation cited (7)

Cases cited (3)

  • Wamala Abdu v Commissioner Land Registration (HCMC No. 16 of 2021)
  • Techno Telecom Limited v Kigalo Investments Ltd (HCMC No. 17 of 2011)
  • Crocodile International (PTE) Limited v Lacoste [2017] NZSC 14

Full judgment

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The original judgment as reported. Read the original PDF before relying on any passage.

Crocs Distributors Limited v Crocodile International (PTE) Limited (Miscellaneous Cause 67 of 2022) [2024] UGCommC 94 (30 April 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.