Wakilii

Purplemoon (U) Ltd v Numaa Industries Ltd (Miscellaneous Application No. 1137 of 2016)

High Court · [2017] UGCOMMC 44 · 2017 Application Granted — Injunction Issued AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for temporary injunction arising from civil suit for trademark infringement
Decision
Injunction granted restraining the Respondent from distributing goods bearing the Applicant's registered trademark pending determination of the main suit

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that registration of a trademark in Uganda under the Trademarks Act 2010 confers exclusive rights on the registered owner subject to sections 24 and 41. Trademark registration in Uganda is independent of registration in other countries under the Paris Convention territorial principle. A party who is not the authorised agent of the registered owner in the country of origin lacks locus standi to challenge registration. The respondent failed to demonstrate authority from the alleged Chinese trademark owner and could not challenge the applicant's valid Uganda registration. Application granted; injunction issued.

Outcome

Injunction granted restraining the Respondent from distributing goods bearing the Applicant's registered trademark pending determination of the main suit

Facts

The applicant, Purplemoon (U) Ltd, is a registered proprietor of a trademark (a moon logo with the word 'moon') in Uganda, registered in July 2015 under Class 24 for textiles and textile goods. In October 2016, the applicant discovered that the respondent, Numaa Industries Ltd, was selling and distributing blankets bearing the same or a similar trademark. The respondent had been dealing in blankets since 2008 and claimed to be an authorised agent of Chinese manufacturers (including Bingling Enterprises Ltd and JIANSGU Ouman Textile Technology Co. Ltd). The respondent applied to register its own trademark 'Purple Moon' in Uganda, to which the applicant objected in September 2016. The applicant filed suit for trademark infringement and sought a temporary injunction to restrain the respondent from using the mark. The respondent counterclaimed that the applicant fraudulently registered a mark belonging to the Chinese manufacturer Luoyang City Guanlinlide Blanket Factory and that the respondent had prior use. The respondent asserted it had authority from certain Chinese entities but not from the alleged registered Chinese trademark owner. The applicant argued exclusive rights flowed from valid Uganda registration and that the respondent lacked locus standi to challenge the registration.

Issues

  1. Whether the Applicant's registration of the trademark confers exclusive rights to the Applicant.
  2. Whether the Respondent has locus standi to challenge the Applicant's registration of the trademark.

Orders

  • Application granted.
  • Injunction issued restraining the Respondent and/or Respondent's agents or servants from distributing goods bearing the Applicant's registered trademark without the permission or licence of the Applicant pending determination of the main suit.
  • Costs of the application to abide the outcome of the main suit.

Rules and key headnotes

Trademarks — Exclusive Rights — Validity of Registration
Registration of a trademark in Part A of the register under the Trademarks Act 2010 confers exclusive rights to the use of the trademark in relation to the specified goods, subject to sections 24 and 41, provided the registration is valid.
Trademarks — Territorial Principle — Independence of Registration
Under Article 6(3) of the Paris Convention for the Protection of Industrial Property, a trademark duly registered in one country of the Union is regarded as independent of marks registered in other countries of the Union, including the country of origin. Registration in Uganda is determined by Uganda's domestic legislation and is independent of foreign trademark registrations.
Trademarks — Locus Standi — Counterclaim for Cancellation
A party who is not the authorised agent of the registered owner of a trademark in the country of origin lacks locus standi to challenge the validity of a trademark registration in Uganda. Where a respondent fails to demonstrate authority from the alleged foreign trademark owner, it cannot maintain a counterclaim for cancellation of a validly issued Ugandan trademark certificate.
Trademarks — Objection to Registration — Procedure Before Registrar
Where an applicant seeks registration of a trademark and an objection is filed under section 12 of the Trademarks Act 2010, the objection must first be decided by the Registrar of Trademarks. The High Court exercises appellate jurisdiction under section 12(5) and should not exercise original jurisdiction over trademark registration disputes. Proceedings before the court relating to a trademark application are premature where the Registrar has not yet decided the objection.
Trademarks — Prior Use Defence — Section 41 Applicability
Section 41 of the Trademarks Act 2010 (saving of vested rights) applies only where a person has continuously used a trademark identical with or nearly resembling the registered mark prior to registration. Where a party pleads that the trademarks are different and not confusing to consumers, it places itself outside the scope of section 41 and cannot rely on prior use as a defence to infringement.
Pleadings — Parties Bound by Pleadings — Contradictory Assertions
Parties are bound by their pleadings and cannot assert facts in contradiction of their own pleaded case. Where a respondent pleads that the trademarks in issue are different and not confusing, it cannot thereafter argue that it has been dealing in identical or similar marks to claim prior use rights.
Trademarks — Certificate of Registration — Presumption of Validity
A certificate of registration issued by the Registrar of Trademarks is conclusive evidence of compliance with the registration procedures mandated by law unless rebutted by the party challenging the registration. The burden of proof under section 101 of the Evidence Act rests on the party alleging non-compliance to adduce evidence, such as a letter from the Registrar, to discharge that burden.

Legislation cited (21)

Cases cited (2)

  • TECNO Telecom Ltd v Kigalo Investments Ltd (HCMC No. 0017 of 2011)
  • Kampala Stocks Supermarket Co Ltd v Seven Days International Ltd (Civil Suit No. 112 of 2015)

Full judgment

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

Purplemoon (U) Ltd v Numaa Industries Ltd (Miscellaneous Application No. 1137 of 2016) [2017] UGCommC 44 (15 May 2017)
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.