Wakilii

Mandella Millers Limited v Dembe Enterprises Limited Another [2024] UGRSB 15

Tribunal · 2024 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation and removal of registered trademark on grounds of non-use under section 46 of the Trademarks Act, 2010
Decision
Trademark cancelled and removed from register; partial assignment rectified to reflect rice only

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The tribunal held that trademark No. UG/T/2007/029770 'SUPREME' in class 30 should be cancelled and removed from the register on grounds of non-use. The Applicant proved non-use for the requisite three-year period, and the Respondent failed to discharge the burden of proving bona fide use. The tribunal also rectified an administrative error in a prior assignment, limiting the third party's rights to rice only, and exercised discretion to admit the Respondent's late counterstatement in the interests of fairness given the complexity arising from the partial assignment.

Outcome

Trademark cancelled and removed from register; partial assignment rectified to reflect rice only

Facts

On 4 July 2007, the Respondent registered trademark No. 029770 'SUPREME' in class 30 for various goods including flour and bread. On 13 October 2020, the Applicant filed three applications to register 'SUPREME' for flour milling products, which were rejected due to similarity with the Respondent's mark. On 22 February 2021, the Applicant filed an application for cancellation on grounds of non-use. The Respondent was served but failed to file a counterstatement within the prescribed 42 days. The Applicant filed evidence of non-use via statutory declaration and investigation report. On 23 August 2023, during the pendency of proceedings, the Respondent assigned the trademark to a third party (Pallet Masters (U) Ltd, later J.H Agro More Africa Limited), but the Office erroneously transferred all rights instead of limiting the transfer to rice as specified in the deed of assignment. The Respondent's advocates subsequently raised this error and sought rectification. The tribunal directed all parties to file representations and added the third party as a necessary party to the proceedings.

Issues

  1. Whether there were errors in the alleged transfer of trademark rights to the third party and if so, what remedies are available to the aggrieved parties?
  2. Whether the Respondent's counterstatement should be admitted despite being filed outside the prescribed time limit?
  3. Whether the Respondent's trademark No. 029770 should be cancelled on grounds of non-use?
  4. Whether the Applicant is an aggrieved person with locus standi to bring the cancellation application?

Orders

  • Trademark No. UG/T/2007/029770 is cancelled and removed from the Register.
  • The certificate of assignment dated 28 August 2023 is rectified to reflect that the assignment to J.H Agro More Africa Limited (formerly Pallet Masters (U) Ltd) is with respect to rice only.
  • The register is amended to reflect Dembe Enterprises Limited as the owner of the trademark with respect to the remaining goods in class 30.
  • Each party shall bear its own costs.

Rules and key headnotes

Trademarks — Cancellation for Non-Use — Locus Standi of Applicant
An applicant whose trademark applications have been rejected due to the existence of a registered mark, and who has invested in using that mark and would be disadvantaged by the unused mark remaining on the register, qualifies as an 'aggrieved person' with locus standi to apply for cancellation under section 46 of the Trademarks Act, 2010.
Trademarks — Cancellation for Non-Use — Burden of Proof
In cancellation proceedings for non-use, once the applicant files evidence alleging non-use, the burden shifts to the registered proprietor to prove bona fide use of the trademark within the three-year period and up to one month before the filing of the application. The registered proprietor is best placed to furnish specific proof of genuine use.
Trademarks — Cancellation for Non-Use — Scope of Investigation Report
An applicant seeking cancellation for non-use is not required to survey the entire country. The selected geographical area should constitute an appropriate sample to create a presumption of non-use. An area covering major commercial centres representing a significant proportion of national GDP and manufacturing activity is sufficient.
Trademarks — Assignment — Partial Transfer of Rights
Under section 33(2) of the Trademarks Act, 2010, a registered trademark may be assigned in respect of all or some of the goods for which it is registered. A certificate of assignment issued by the Registrar must accurately reflect the terms of the deed of assignment and cannot exceed or vary the rights transferred therein. An error in the certificate may be rectified under section 90(1)(d) of the Act.
Preliminary Objections — Discretion of Tribunal on Order of Determination
A tribunal has discretion to determine the order in which preliminary objections are disposed of. The guiding principle is whether determining the preliminary objection will dispose of the whole matter. It is not the place of a tribunal to exercise discretion in a manner that gives a party time to rectify past procedural missteps.
Trademarks — Cancellation Proceedings — Extension of Time to File Counterstatement
In cancellation proceedings under the Trademarks Act, the Registrar has discretion under regulation 80 to extend time for filing a counterstatement, either on application or on the Registrar's own motion. Unlike opposition proceedings, failure to file a counterstatement does not lead to automatic discontinuation, though the Registrar proceeds without considering the proprietor's defence.
Trademarks — Cancellation for Non-Use — Post-Application Evidence Inadmissible
Evidence of use of a trademark arising after the filing of a cancellation application cannot be considered in determining whether there was bona fide use during the three-year period and one month prior to the application. An assignment executed during the pendency of cancellation proceedings does not constitute evidence of prior use.

Legislation cited (14)

Cases cited (10)

  • Potomac Tobacco Company Ltd v British American Tobacco Co Ltd (Miscellaneous Application No. 436 of 2006)
  • Babubhai Dhanji Pathak v Zainab Mrekwe (1964) EA 24
  • Telecom Ltd v ZTE Cooperation (Supreme Court Civil Appeal No. 3 of 2017)
  • Kamugisha Anatoli and Another v H & L Exporters (U) Ltd (Miscellaneous Application No. 2034 of 2023)
  • Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
  • In the matter of an application for cancellation of the trademark SUNTOP registered in the name of Hillside Dairy & Agriculture Ltd at the request of BY CO-RO Foods A/S (Uganda Trademarks Office, 2020)
  • C-609/11 P Centrotherm Systemtechnik GmbH v Office for Harmonization in the Internal Market
  • Walton International Ltd v Verweij Fashion BV (2018) R.P.C 19
  • Blue Bell, Inc. v Farah Mfg. Co., United States Court of Appeals, Fifth Circuit, 1975 508 F.2d 1260, 185 U.S. P.Q.1
  • Tecno Telecom Limited v Kigalo Investments Ltd (Miscellaneous Cause No. 17 of 2011)

Full judgment

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Mandella Millers Limited v Dembe Enterprises Limited Another 2024 UGRSB 15 (17 July 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.