Wakilii

Mandella Millers Limited v Dembe Enterprises Limited Another [2024] UGRSB 16

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; register rectified to reflect partial assignment to third party for 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 error in a prior certificate of assignment, limiting the third party's rights to rice only and restoring the Respondent's ownership of the mark for other goods in class 30. The Respondent's late counterstatement was admitted following the Registrar's exercise of discretion to extend time.

Outcome

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

Facts

On 4 July 2007, the Respondent registered trademark No. 029770 'SUPREME' in class 30 for various goods including flour, bread, and confectionery. On 13 October 2020, the Applicant filed three applications to register 'SUPREME' for flour milling products, bread, and pastries, which were rejected due to similarity with the Respondent's mark. On 22 February 2021, the Applicant filed an application for cancellation of the Respondent's mark on grounds of non-use. The Respondent was served but failed to file a counterstatement within the prescribed 42 days. On 23 August 2023, during the pendency of the cancellation proceedings, the Respondent assigned the trademark to a third party (Pallet Masters (U) Ltd, later renamed J.H Agro More Africa Limited). The Office issued a certificate of assignment transferring all rights, but the deed of assignment only covered rice. The Respondent's advocates later raised this error and sought rectification. The Applicant submitted evidence of non-use including an investigation report covering 13 districts showing no market presence of the Respondent's 'SUPREME' branded goods, while the Applicant had established substantial use and goodwill in the mark.

Issues

  1. Whether there were errors in the alleged transfer of the trademark to the third party and if so, what are the remedies available to the aggrieved parties?
  2. Whether the Respondent's counterstatement should be admitted?
  3. Whether the Respondent's trademark No. 029770 should be cancelled on grounds of non-use?

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 the Third party (J.H Agro More Africa Limited) is with respect to rice only.
  • The register is amended to reflect the Respondent (Dembe Enterprises Limited) as the owner of the trademark with respect to the rest of the 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 an allegedly unused registered mark, and who has invested in using and marketing goods under that mark, is an aggrieved person with locus standi to apply for cancellation of the registered mark under section 46 of the Trademarks Act, 2010.
Trademarks — Cancellation for Non-Use — Burden of Proof
In an application for cancellation on grounds of non-use, once the applicant submits evidence of non-use, the burden shifts to the registered proprietor to prove bona fide use of the mark within the three-year period and up to one month before the filing of the application, as the proprietor is best placed to furnish specific proof of use.
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 goods for which it is registered or some of those goods. 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.
Trademarks — Cancellation Proceedings — Effect of Post-Application Assignment
Evidence of assignment or use of a trademark that occurs after the filing of a cancellation application cannot be considered in determining whether the mark was used during the requisite three-year period ending one month before the application was filed. The relevant period for assessing use is fixed by the date of the application.
Tribunal Procedure — Discretion to Extend Time for Filing Counterstatement
The Registrar has discretion under regulation 80 of the Trademark Regulations to extend time for filing a counterstatement, and may exercise this discretion on his own motion where third party rights have arisen during the pendency of proceedings and fairness requires hearing all affected parties.
Preliminary Objections — Discretion in Order of Determination
A tribunal has discretion to determine the order in which preliminary objections are disposed of. The guiding principle is whether determining a particular preliminary objection will dispose of the whole matter, not whether it might give a party time to rectify procedural missteps. The discretion must be exercised judiciously, taking into account the interests of all parties and ensuring fairness.
Trademarks — Purchaser's Due Diligence — Acquisition Subject to Existing Claims
A purchaser of trademark rights who fails to conduct sufficient due diligence or who ignores existing claims acquires the right subject to any encumbrances or claims existing on that right, having voluntarily assumed the risk. Where such claims lead to loss of rights, remedies may be sought against the seller in courts of judicature, but the purchaser must bear the consequences of the outcome of pending proceedings.

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)
  • Walton International Ltd v Verweij Fashion BV (2018) RPC 19
  • Centrotherm Systemtechnik GmbH v OHIM (C-609/11 P)
  • Blue Bell Inc v Farah Mfg Co 508 F.2d 1260 (5th Cir. 1975)
  • 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 16 (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.