Wakilii

Muse Af Enterprises Co. Ltd v Billen General Trading Ltd & 2 Ors (Civil Suit No. 102 of 2013)

High Court · [2015] UGCOMMC 88 · 2015 Judgment for Defendant AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Consolidated first instance civil suits: plaintiff's trademark infringement claim and 3rd defendant's counterclaim for fraudulent registration
Decision
Plaintiff's suit dismissed. Judgment entered on counterclaim declaring fraudulent registration and ordering removal of trademark from register. 1st defendant awarded general damages and costs.

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The court held that the plaintiff fraudulently registered the PANASUPER trademark in Uganda. The plaintiff, acting as agent of the Chinese manufacturer through a power of attorney, exceeded its authority by registering the mark in its own name rather than the principal's name. An agent cannot use a power of attorney to register the principal's trademark for the agent's own benefit. The court ordered removal of the trademark from the register and dismissed the plaintiff's infringement and passing off claims. The defendants' counterclaim succeeded in part, establishing fraudulent registration, but the court declined to order direct registration in the defendants' name, requiring them to follow statutory procedures. General damages of UGX 10,000,000 were awarded to the 1st defendant for business interruption caused by interim orders.

Outcome

Plaintiff's suit dismissed. Judgment entered on counterclaim declaring fraudulent registration and ordering removal of trademark from register. 1st defendant awarded general damages and costs.

Facts

The plaintiff registered the PANASUPER trademark in Uganda in 2008 (with retrospective effect to 2006 application date), claiming to own it following discussions at a trade fair in China with Mr. Shore, who represented the 2nd and 3rd defendants. The plaintiff imported PANASUPER batteries manufactured by the 2nd and 3rd defendants from 2006 to 2012. In 2012, the 2nd defendant appointed the 1st defendant as its new agent/distributor in Uganda. The plaintiff then sued for trademark infringement. The defendants counterclaimed, alleging that the 2nd defendant is the registered proprietor of PANASUPER in China (from 2003) and that the plaintiff was merely its agent in Uganda under a power of attorney dated 15 February 2007, which authorised the plaintiff to register the mark on behalf of the principal, not in the plaintiff's own name. Evidence showed the plaintiff had submitted a distributorship agreement and the power of attorney to the trademark registry, and had declared itself in a statutory declaration to be the lawful attorney of the 3rd defendant when opposing another party's objection to registration.

Issues

  1. Whether the plaintiff registered the PANASUPER trademark fraudulently.
  2. Whether the plaintiff's action infringed the 2nd and 3rd defendants' trademark.
  3. Whether the 1st and 2nd defendants infringed the said trademark or passed off the batteries as those of the plaintiff.
  4. What are the remedies available to the parties.

Orders

  • It is declared that the plaintiff registered the PANASUPER trademark fraudulently.
  • It is ordered that the PANASUPER trademark be removed from the register of trademarks in Uganda.
  • The plaintiff shall pay the 1st defendant general damages of UGX 10,000,000.
  • Interest is awarded on the general damages at 10% per annum from the date of judgment until payment in full.
  • Costs of the suit are awarded to the defendants.
  • The plaintiff's suit is dismissed for lack of merit.

Rules and key headnotes

Intellectual Property — Trademarks — Agent Registration — Fraudulent Registration by Agent
An agent acting under a power of attorney cannot register the principal's trademark in the agent's own name for the agent's own benefit. Where a power of attorney authorises an agent to register the principal's trademark and protect it, but the agent registers it in the agent's own name, such registration is fraudulent and exceeds the authority granted by the power of attorney, which by its nature only allows the agent to act on behalf of the principal.
Contract Law — Agency — Power of Attorney — Scope of Authority — Strict Construction
Powers of attorney are to be construed strictly. Where an act purporting to be done under a power of attorney is challenged as being in excess of authority, it is necessary to show that on a fair construction of the whole instrument the authority in question is found within the four corners of the instrument, either in express terms or by necessary implication. An agent cannot use a power of attorney to benefit himself to the exclusion and detriment of the principal.
Intellectual Property — Trademarks — Registration — Retrospective Effect — Date of Registration
Under the Trademarks Act Cap. 217 s.21(1)(b), when a trademark is registered, it is deemed to be registered as of the date of application. However, this retrospective application of the date of registration applies only upon actual entry of the mark onto the register. Prior to registration, the applicant is not the registered proprietor and cannot validly contract as owner of the mark.
Intellectual Property — Trademarks — Infringement — Validity of Registration as Precondition
The exclusive right to use a trademark and to sue for infringement under the Trademarks Act 2010 s.36(1) only accrues if the registration is valid. Where the validity of registration is successfully challenged and the mark is found to have been fraudulently registered, no right to sue for infringement arises.
Civil Procedure — Preliminary Objections — Timing — Objections Raised as Afterthought
A preliminary objection by its nature should be raised at the commencement of proceedings or at the earliest opportunity, not during or after trial when the case has been heard and submissions made. Where a preliminary objection is raised belatedly as an afterthought after full participation in proceedings including evidence and scheduling, it will be overruled.

Legislation cited (20)

Cases cited (21)

  • Auto Garage v Motokov (1971) EA 314
  • Pheneas Agaba v Swift Freight (High Court Civil Suit No. 1000 of 1999)
  • Montgomerie v United Kingdom Mutual Steamship Association (1891) 1 QB 370
  • Friendship Container Manufacture Ltd v Mitchell Cotts (K) Ltd (2001) 2 EA 338
  • Ram v Singh (1933) 5 ULR 76
  • Nassan Wasswa & 9 Others v Uganda Rayon Textiles [1982] HCB 137
  • Fredrick Zaabwe v Orient Bank & Ors (Supreme Court Civil Appeal No. 04 of 2006)
  • Kampala Bottlers Ltd v Domanico (U) Ltd (Supreme Court Civil Appeal No. 22 of 1992)
  • Uganda Posts and Telecommunications v Lutaaya (Supreme Court Civil Appeal No. 36 of 1995)
  • Sejaka Nalima v Rebbecca Musoke (Civil Appeal No. 12 of 1985)
  • Rehema Namuli v James Mulwana & 3 Ors (High Court Civil Suit No. 613 of 2004)
  • Shri Chander Mohan Kapoor T/A British Herbal Cosmetics v Amin Chavania T/A Jaskar Enterprises (High Court Civil Suit No. 12 of 2005)
  • Uganda Broadcasting Corporation v Simba (K) Ltd (Civil Appeal No. 12 of 2014)
  • Bryant, Powis and Bryant Limited v LA Banque Du Peuple [1893] AC 170
  • Gold Trust (U) Ltd (Now DFCU Bank Ltd) v Josephine Zalwango Nsimbe (Civil Suit No. 226 of 1992)
  • Imperial Bank of Canada v Begley [1936] 2 All ER 367
  • Frederick J.K Zaabwe v Orient Bank Ltd & 5 Ors (Supreme Court Civil Appeal No. 4 of 2006)
  • Abercrombie & Kent Ltd v Abercrombie & Kent (U) Ltd & Ors (High Court Civil Suit No. 1035 of 1995)
  • Parker Knoll Ltd v Knoll International Ltd [1962] RPC 265
  • NAPRO Industries Ltd v Five Star Ltd & Anor (High Court Civil Suit No. 325 of 2004)
  • Angela Katatumba v Anti-Corruption Coalition of Uganda (High Court Civil Suit No. 307 of 2011)

Full judgment

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

Muse Af Enterprises Co. Ltd v Billen General Trading Ltd & 2 Ors (Civil Suit No. 102 of 2013) [2015] UGCommC 88 (16 June 2015)
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.