Wakilii

Potomac Trading Company Ltd v British American Tobacco Co Ltd & Anor (HCT-00-CC-MA 436 of 2006)

High Court · [2006] UGCOMMC 67 · 2006 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for removal of trademark from register for non-use under Trademarks Act s.28
Decision
Trademark 'YES' removed from the register; application allowed with costs

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court ordered the removal of trademark 'YES' (No. 19212) from the register for non-use under Trademarks Act s.28. The court found the applicant had standing as an aggrieved person whose own application was rejected due to the existing registration. The respondent failed to demonstrate any bona fide use of the trademark in the five years preceding the application, and inquiry with Uganda Revenue Authority confirmed no manufacture or import of YES brand tobacco products.

Outcome

Trademark 'YES' removed from the register; application allowed with costs

Facts

The applicant, Potomac Trading Company Ltd, is the registered proprietor of the trademark 'YES' in multiple jurisdictions including South Africa and under the Madrid Agreement with WIPO. When it applied to register the trademark in Uganda on 24 February 2004, the application was rejected due to an existing registration by the first respondent, British American Tobacco Co Ltd. The second respondent, British American Tobacco (Brands) Ltd, recently applied for renewal of the trademark. The applicant sought removal of the trademark from the register on grounds of non-use. Inquiry with Uganda Revenue Authority confirmed that no person manufactures or imports tobacco products bearing the YES brand into Uganda. The respondents were duly served but did not appear or file any response.

Issues

  1. Whether the applicant is an aggrieved person with standing to seek removal of the trademark from the register.
  2. Whether the trademark 'YES' was registered without bona fide intention to use or there has been no bona fide use for a continuous period of five years or longer.

Orders

  • The trademark 'YES', trademark no.19212 in class 34, registered in favour of the first respondent, is removed from the register of trademarks in Uganda for non-use.
  • Application allowed with costs to the applicant.
  • The second order sought by the applicant (declaration that recent renewal is null and void) is not considered given the finding on de-registration.

Rules and key headnotes

Trademarks — De-registration for Non-Use — Locus Standi of Aggrieved Person
An applicant whose trademark registration was rejected due to an existing registration by another party has standing as an 'aggrieved person' under Trademarks Act s.28 to seek removal of that existing trademark from the register for non-use.
Trademarks — De-registration for Non-Use — Burden of Proof
Where an application for de-registration for non-use is brought under Trademarks Act s.28, the burden lies on the trademark owner to demonstrate bona fide use of the trademark in relation to the goods for which it is registered. The trademark owner is in the best position to show such use.
Trademarks — De-registration for Non-Use — Grounds Under Section 28
A registered trademark may be removed from the register under Trademarks Act s.28 where the trademark was registered without bona fide intention to use it, and there has been no bona fide use up to one month before the application, or where there has been no bona fide use for a continuous period of five years or longer up to one month before the application.

Legislation cited (7)

  • Trademarks Act Cap.217 s.28
  • Trademarks Act Cap.217 s.22(2)
  • Trademarks Act Cap.217 s.29
  • Trademarks Act Cap.217 s.52
  • Civil Procedure Rules O.52 r.1
  • Civil Procedure Rules O.52 r.3
  • Civil Procedure Act s.98

Full judgment

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

Potomac Trading Company Ltd v British American Tobacco Co Ltd & Anor (HCT-00-CC-MA 436 of 2006) [2006] UGCommC 67 (15 November 2006)
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.