Wakilii

Global Center Limited v Price Costco International Inc. (Miscellaneous Application 766 of 2023)

High Court · [2024] UGCOMMC 81 · 2024 Application Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application to strike out plaint in Civil Suit No. 784 of 2022 for being premature, frivolous and vexatious arising from parallel trademark opposition proceedings before the Registrar of Trademarks
Decision
Application to strike out plaint dismissed; main suit to proceed

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that opposition proceedings before the Registrar of Trademarks under s.12 of the Trademarks Act 2010 do not preclude the simultaneous prosecution of a passing off action under s.35 in the High Court. Section 35 provides that nothing in the Act shall affect the right of action for passing off. The two proceedings serve different purposes: opposition deals with registration and distinctiveness; passing off deals with goodwill, reputation and infringement. The Registrar's quasi-judicial role is limited to determining whether a mark should be registered, while the High Court has jurisdiction to award damages and injunctions. The pendency of opposition proceedings does not render a passing off suit premature, frivolous or vexatious.

Outcome

Application to strike out plaint dismissed; main suit to proceed

Facts

The applicant applied to register the trademark "COSTCO" before the Registrar of Trademarks. On 4 April 2022, the respondent filed an opposition to the registration. Before the opposition was settled, the respondent filed Civil Suit No. 784 of 2022 in the High Court Commercial Division for passing off. The applicant then brought this application to strike out the plaint as premature, frivolous and vexatious, arguing that the ownership question was still before the Registrar and the suit was an abuse of process calculated to cause unnecessary financial loss. The respondent contended that the opposition and the passing off action serve different purposes: the opposition concerns whether the mark should be registered, while the suit concerns protection of well-known marks, compensation and injunctions for passing off.

Issues

  1. Whether the application is competent.
  2. Whether M/S MMAKS Advocates has instructions to represent the respondent in this application.
  3. Whether the respondent's affidavit in reply is competent.
  4. Whether the main suit is premature, frivolous and vexatious.

Orders

  • Application dismissed.
  • Costs of the application to abide by the outcome of the main suit.

Rules and key headnotes

Trademarks — Passing Off — Relationship with Opposition Proceedings
Section 35 of the Trademarks Act 2010 provides that nothing in the Act shall affect a right of action for passing off or the remedies in respect thereof. Opposition proceedings under s.12 before the Registrar of Trademarks and a passing off action in the High Court may therefore subsist simultaneously between the same parties over the same mark without one being premature or an abuse of process.
Trademarks — Opposition and Passing Off — Distinct Subject Matters
Opposition proceedings under the Trademarks Act 2010 focus on the distinctiveness of a mark and its ability to distinguish goods from those of another source, while a passing off action focuses on goodwill, reputation and a clear track record for the mark in the market. The two proceedings address substantially different issues and apply different legal tests.
Trademarks — Jurisdiction — Registrar and High Court
Section 12 of the Trademarks Act 2010 assigns the Registrar of Trademarks a specific and limited quasi-judicial role to determine oppositions to trademark registration applications and award costs. Sections 1(1), 35 and 79 allow the High Court to handle passing off actions and award damages and injunctions. The legal mandates differ and the pendency of opposition proceedings cannot hinder prosecution of a passing off action.
Statutes — Harmonious Construction — Reading as a Whole
Statutes must be read as a whole in context, giving effect to every word if possible. The Court must give consistent, harmonious and sensible effect to all parts of the statute and is not permitted to consider only certain isolated provisions. It is the duty of the Court to reconcile different provisions so as to make them consistent, harmonious and sensible.
Advocates — Instructions — Proof of Retainer
An advocate who files pleadings on behalf of a litigant will be deemed to have been retained to render full representation of that litigant. Filing of pleadings is sufficient proof of the advocate-client relationship and an indication that counsel is under instructions. The absence of a written retainer agreement does not per se imply lack of instructions.
Affidavit Evidence — Advocate Swearing Affidavit — Competence
An advocate is not prohibited from swearing an affidavit on behalf of a client of the firm where he or she practices, where necessary and on matters within his or her knowledge. The primary guiding factor for admissibility is whether the facts sworn to are within the deponent's knowledge, not whether the deponent is employed for gain in the instructed law firm.
Affidavit Evidence — Argumentative Affidavits — Treatment
An affidavit is meant to adduce evidence and not to argue the application by making legal averments and conclusions. However, in line with the constitutional directive in Article 126(2)(e) to administer substantive justice without undue regard to technicalities, the Court may take a liberal approach with defective affidavits by expunging argumentative portions and considering only those parts which conform to the rules on affidavit evidence.

Legislation cited (12)

Cases cited (8)

  • Attorney General and Another v James Mark Kamoga (Supreme Court Civil Appeal No. 8 of 2008)
  • Nabanjala Gorreti v Nabukalu Hellen (High Court Taxation Appeal No. 4 of 2018)
  • Hon Abiku Jessica v Eriyo Jessica Osuna (Miscellaneous Civil Application Nos. 4, 31 and 37 of 2015)
  • Mbarara Municipal Council v Jetha Brothers Ltd (Supreme Court Miscellaneous Application No. 10 of 2021)
  • Male Mabirizi v Attorney General (Supreme Court Civil Application No. 7 of 2018)
  • Col Dr Kiiza Besigye v Yoweri K Museveni and Another (Supreme Court Presidential Election Petition No. 1 of 2001)
  • Britania Allied Industries Ltd v Aya Biscuits (U) Ltd (High Court Civil Suit No. 24 of 2009)
  • Farid Meghani v Uganda Revenue Authority (High Court Civil Appeal No. 6 of 2021)

Full judgment

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

Global Center Limited v Price Costco International Inc. (Miscellaneous Application 766 of 2023) [2024] UGCommC 81 (30 January 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.