Wakilii

Modino Furniture Company Limited v Homeart Uganda Limited and Others (Civil Suit No. 427 of 2020; Civil Suit No. 724 of 2019)

High Court · [2024] UGCOMMC 428 · 2024 Judgment for Plaintiff AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Consolidated first instance suits for trademark infringement — plaintiff claimed ownership of registered trademark 'DOGTAS'; defendants counterclaimed that plaintiff's registration was unlawful due to prior international registration.
Decision
Judgment entered for Plaintiff. Plaintiff's trademark ownership declared. Permanent injunction granted restraining Defendants from further infringement. Damages and costs awarded to Plaintiff. 2nd Defendant's counterclaim dismissed with costs.

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that national trademark registration in Uganda is independent of international registration under the Madrid Agreement; territorial principle applies. International registration does not confer automatic protection in Uganda absent designation and compliance with s.44 Trademarks Act 2010. Plaintiff lawfully registered and owns the DOGTAS trademark. Defendants' use without authorization constitutes infringement.

Outcome

Judgment entered for Plaintiff. Plaintiff's trademark ownership declared. Permanent injunction granted restraining Defendants from further infringement. Damages and costs awarded to Plaintiff. 2nd Defendant's counterclaim dismissed with costs.

Facts

Plaintiff Modino Furniture Company Limited, incorporated in Uganda in 2018, registered trademark 'DOGTAS' with Uganda Registration Services Bureau on 17 October 2018 for furniture products in class 20. In July 2019, Plaintiff discovered 1st Defendant Homeart Uganda Limited operating a furniture store under the brand 'DOGTAS Exclusive Home Furniture' on Jinja Road. 1st Defendant asserted it had authorization through a Franchise Agreement dated 1 August 2018 from 2nd Defendant Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi, a Turkish company claiming international registration of 'DOGTAS' under the Madrid Agreement and WIPO. 2nd Defendant instituted counterclaim alleging Plaintiff's registration was unlawful. Plaintiff maintained it was the only registered proprietor of the mark in Uganda and Defendants' use constituted infringement. The suits were consolidated by consent.

Issues

  1. Who is the rightful owner of the Dogtas trademark?
  2. Whether the trademark was legally and lawfully registered in Uganda.
  3. Whether there is any trademark infringement, and if so by whom.
  4. What remedies are available to the parties.

Orders

  • Judgment entered for the Plaintiff against the Defendants.
  • Declaration that the Defendants infringed on the Plaintiff's DOGTAS trademark.
  • Order for delivery up and destruction of all branding materials, posters, logos, banners, signage, and labels bearing the mark DOGTAS.
  • Permanent injunction restraining the Defendants, their servants, and or agents from any further acts of infringement of the Plaintiff's trademark comprising of the word DOGTAS or in any way dealing in infringing products or offering for sale products under the mark DOGTAS.
  • General damages of UGX 500,000,000 awarded to the Plaintiff.
  • Interest on general damages at a rate of 8% per annum from the date of judgment till payment in full.
  • Costs of the suit awarded to the Plaintiff.
  • 2nd Defendant's suit vide HCCS No. 0427 of 2020 against the Plaintiff dismissed with costs.

Rules and key headnotes

Trademarks — Registration — Territorial Principle
Registration of a trademark in the country of origin under the Paris Convention for the Protection of Industrial Property neither accords automatic protection of that mark in Uganda nor bars registration in Uganda. A mark duly registered in a country of the union is regarded as independent of marks registered in other countries of the union, including the country of origin.
Trademarks — International Registration — Madrid Agreement — Designated States
Uganda is neither a designated state for trademark protection under the Madrid Protocol nor a signatory to the Madrid Agreement. A party that registers a trademark internationally under the Madrid Agreement is not automatically entitled to protection of that mark in Uganda absent designation and compliance with section 44 of the Trademarks Act 2010.
Trademarks — Protection of Marks Registered in Country of Origin — Section 44 Trademarks Act 2010
Where a foreign trademark owner seeks protection in Uganda based on registration in the country of origin, section 44(3) of the Trademarks Act 2010 requires the foreign owner to file a notice of objection with the Registrar upon application for registration of the same mark in Uganda by another party, and give an undertaking to apply for registration in Uganda within three months. Failure to comply means the foreign owner cannot derive benefit of protection in Uganda.
Trademarks — Prima Facie Evidence of Registration — Section 58 Trademarks Act 2010
The fact that a person is registered as the owner of a trademark is prima facie evidence of the validity of the original registration of that trademark. A certificate of trademark registration constitutes proof of registration.
Trademarks — Infringement — Exclusive Rights Upon Registration — Section 36 Trademarks Act 2010
Upon registration of a trademark, the owner acquires exclusive rights to use or to authorize any other person to use that trademark in relation to those goods for which the mark was registered. Use of a registered trademark by another party without authorization constitutes infringement.
Trademarks — Unregistered Marks — Section 34 Trademarks Act 2010
Under section 34 of the Trademarks Act 2010, no action for unregistered trademarks can be instituted to prevent use or recover damages. A suit based on an unregistered trademark is untenable, and a franchise agreement founded on an unregistered mark is inconsequential for purposes of trademark protection in Uganda.

Legislation cited (23)

Cases cited (17)

  • Anglo Fabrics (Bolton) Ltd and Another v African Queen and Another (High Court Civil Suit No. 632 of 2006)
  • Colgate Palmolive Company Ltd v Sonde Supermarket Ltd (High Court Civil Suit No. 689 of 2010)
  • Kampala Stocks Supermarket Co. Ltd v Seven Days International Ltd (High Court Civil Suit No. 112 of 2015)
  • Purpplemoon (U) Ltd v Numaa Industries (High Court Miscellaneous Application No. 1137 of 2016)
  • Nice House of Plastic v Hamidu Lubega (High Court Civil Suit No. 0695 of 2006)
  • Vision Impex Limited v Sansa Ambrose and Another (High Court Civil Suit No. 303 of 2013)
  • Uganda v Thomas Kwoyelo (Constitutional Appeal No. 01 of 2012)
  • M/s Semuyaba, Iga & Co. Advocates v Attorney General of the Republic of South Sudan (Miscellaneous Application No. 004 of 2022)
  • Salomon v Salomon [1896] UKHL
  • Takiya Kashwahiri and Another v Kajungu Dennis (Court of Appeal Civil Appeal No. 85 of 2011)
  • Kamo Enterprises Limited v Krystalline Salt Limited (Supreme Court Civil Appeal No. 08 of 2018)
  • Nairobi Java House Ltd v Mandela Auto Spares Ltd (High Court Civil Appeal No. 13 of 2015)
  • Robert Cuossens v Attorney General (Supreme Court Civil Appeal No. 8 of 1999)
  • Crown Beverages Ltd v Sendu Edwards (Supreme Court Civil Appeal No. 1 of 2005)
  • Premchandra Shenoi and Another v Maximov Oleg Petrovich (Supreme Court Civil Appeal No. 9 of 2003)
  • Mukisa Biscuit Manufacturing Co. Ltd v West End Distributors Ltd (No.2) [1970] EA 469
  • Gulaballi Ushillani v Kampala Pharmaceuticals Ltd (Supreme Court Civil Appeal No. 6 of 1998)

Full judgment

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

Modino Furniture Company Limited v Homeart Uganda Limited and Others (Civil Suit No. 427 of 2020; Civil Suit No. 724 of 2019) [2024] UGCommC 428 (11 October 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.