Wakilii

Global Center Ltd t a Costco Supermarket v Price Costco International, Inc. (Miscellaneous Application No. 0766 of 2023)

High Court · [2024] UGCOMMC 438 · 2024 Application Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application to strike out plaint in underlying civil suit 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 notwithstanding pendency of trademark opposition proceedings before the Registrar

Observed later treatment

Cited — treatment unverified cited in 1 (treatment unverified) Sequitur — Uganda’s citator · Derived from citing cases in the Wakilii corpus — not an assertion that this case is good law.

Citator coverage is limited to judgments in the Wakilii corpus and source-matched treatment records. Absence of a signal is not an assertion that the case remains good law.

No adverse treatment recorded Cited 1 time with no adverse treatment recorded; not yet tested on the merits. Derived from citing cases in the Wakilii corpus — a deterministic signal, not legal advice.

AI-generated summary. This summary was generated by AI from the full text of the judgment. It may contain errors or omissions—always read the source judgment before relying on it.

Holding

Held that opposition proceedings before the Registrar of Trademarks under section 12 of the Trademarks Act 2010 and passing off actions under section 35 can mutually subsist between the same parties over the same mark. Section 35 provides that nothing in the Trademarks Act affects the right of action for passing off, meaning opposition proceedings cannot hinder prosecution of a passing off action. The two proceedings have distinct subject matters, apply different legal tests, and offer different reliefs. Application dismissed.

Outcome

Application to strike out plaint dismissed; main suit to proceed notwithstanding pendency of trademark opposition proceedings before the Registrar

Facts

The applicant filed an application with the Registrar of Trademarks to register the mark "COSTCO". On 4 April 2022, the respondent opposed the registration. Before the opposition was settled, the respondent filed Civil Suit No. 784 of 2023 in the High Court Commercial Division seeking remedies for passing off. The applicant brought this application to strike out the plaint, arguing that the main suit was premature, frivolous and vexatious because the matters therein were still before the Registrar of Trademarks, and that there was a likelihood of colliding judgments from parallel proceedings. The respondent opposed, arguing that opposition proceedings concern whether a mark should be registered, while the passing off action concerns compensation and injunctions for infringement of well-known marks.

Issues

  1. Whether the application to strike out the plaint 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

  • This application is hereby dismissed.
  • Costs of this application shall abide by the outcome of the main suit.

Rules and key headnotes

Trademarks — Passing Off Actions — Relationship to Opposition Proceedings — Parallel 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 of that right. Opposition proceedings under section 12 and passing off actions under section 35 can mutually subsist between the same parties over the same mark, as nothing in the Act (including opposition proceedings) can stop, limit or otherwise affect a person's right to file a passing off action.
Trademarks — Opposition Proceedings vs Passing Off Actions — Distinct Subject Matters and Reliefs
Opposition proceedings before the Registrar of Trademarks and passing off actions before the High Court have substantially distinct subject matters. Opposition focuses on the distinctiveness of a mark or its ability to distinguish goods, while passing off focuses on the existence of goodwill, reputation and a clear track record for the mark in the market. The available reliefs also differ: the Registrar can only determine whether the mark should be registered and award costs, while the Court can award damages and issue injunctions to prevent further infringement.
Trademarks Act — Reading Statutes as a Whole — Harmonious Construction
Statutes must be read as a whole in context. The Court is bound to give consistent, harmonious and sensible effect to all parts of the statute, to the extent possible, and is not permitted to consider only certain isolated parts of the statute. When sections 1(1), 12, 35, 57 and 79 of the Trademarks Act 2010 are read as one harmonious whole, they clearly anticipate both opposition proceedings before the Registrar and passing off actions before the High Court.
Abuse of Court Process — Test — Improper Purpose
Abuse of court process arises only when court process is used for an improper purpose or for a purpose other than the one for which it was established. A party is not abusing court process merely by bringing an application that ultimately fails on the merits, provided the party had a legitimate concern justifying the indulgence of the court.
Advocate-Client Relationship — Proof — Filing of Pleadings
An advocate who files pleadings on behalf of a litigant will be deemed to have been retained to render full representation of the litigant. Filing of pleadings on a party's behalf is sufficient proof of the advocate-client relationship and an indication that counsel is under instructions. The absence of a written agreement does not per se imply that counsel has no instructions to act.
Affidavit Evidence — Advocate Swearing Affidavit — Competence — Personal Knowledge
An advocate is not prohibited from swearing an affidavit on behalf of a client of the firm where he or she practices, where necessary, especially on matters that are well within his or her knowledge. An affidavit does not become inadmissible simply because the deponent is employed for gain in the law firm representing the party. The primary guiding factor to admissibility is whether the facts sworn to are within the deponent's knowledge.
Affidavit Evidence — Argumentative Affidavits — Treatment — Liberal Approach — Substantive Justice
An affidavit is meant to adduce evidence and not to argue the application by making legal averments and conclusions. However, courts should take a liberal approach in dealing with defective affidavits in line with Article 126(2)(e) of the Constitution, which directs courts to administer substantive justice without undue regard to technicalities. Where an affidavit contains argumentative portions, the court should reject and expunge only those parts and consider the parts which conform to the rules on affidavit evidence.

Legislation cited (12)

Cases cited (8)

  • Attorney General & Anor v James Mark Kamoga (Supreme Court Civil Appeal No. 8 of 2008)
  • Nabanjala Gorreti v Nabukalu Hellen (HC 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 & Anor (SC Presidential Election Petition No. 1 of 2001)
  • Britania Allied Industries Ltd v Aya Biscuits (U) Ltd (HCCS No. 24 of 2009)
  • Farid Meghani v Uganda Revenue Authority (HC Civil Appeal No. 6 of 2021)

Cases citing this judgment (1)

How later Ugandan judgments in the Wakilii corpus have cited this case. Treatment labels come from Sequitur — Uganda’s citator — each backed by a verbatim span from the citing judgment, and are not an assertion that this case is, or is not, good law.

Full judgment

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

Global Center Ltd t a Costco Supermarket v Price Costco International, Inc. (Miscellaneous Application No. 0766 of 2023) [2024] UGCommC 438 (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.