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Rani Refreshments FZCO v Akaba Investments Limited (Trademark Application 29459 of 2020)

Tribunal · [2023] UGRSB 6 · 2023 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of registered trademark on grounds of non-use
Decision
Trademark registration cancelled and removed from register

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Uganda Registration Services Bureau cancelled trademark registration UG/T/2007/029459 'RANI JUICE' in class 32 on grounds of non-use. The tribunal found that the respondent, a dormant company with no company filings since incorporation in 2005, had not made bona fide use of the trademark since registration in 2007. The applicant, a multinational company with prior registration through ARIPO and extensive trading activity in Uganda and 104 countries, was held to be an aggrieved person with standing. The tribunal proceeded ex parte after the respondent failed to file a counterstatement despite having knowledge of the proceedings.

Outcome

Trademark registration cancelled and removed from register

Facts

The respondent Akaba Investments Limited registered trademark 'RANI JUICE' in class 32 with priority date 22 December 2006. The applicant Rani Refreshments FZCO, a Dubai-based multinational, held prior registration of 'RANI' through ARIPO with entitlement date 9 July 2004, designating Uganda among 104 countries. The applicant filed for cancellation on 9 July 2020 alleging non-use. A 2019 investigation report sampled six Ugandan areas and found no products originating from the respondent; products branded 'Rani Juice' were imported by Aujan Industries LLC under the applicant's authorization. The respondent's registered physical address could not be located. Company register searches revealed the respondent filed no returns, resolutions, or statutory forms since incorporation in 2005. The respondent failed to file a counterstatement despite knowledge of proceedings through multiple advocates.

Issues

  1. Whether the respondent's mark ought to be cancelled on grounds of non-use.
  2. Whether the applicant's mark is entitled to protection under the Paris Convention.
  3. Whether the respondent's mark is identical to or confusingly similar to the applicant's mark.
  4. What remedies are available to the parties.

Orders

  • Trademark Number UG/T/2007/029459 'RANI JUICE' in class 32 cancelled and removed from the Register of Trademarks.
  • Each party to bear its own costs.

Rules and key headnotes

Trademarks — Cancellation for Non-Use — Locus Standi of Aggrieved Person
An aggrieved person with standing to apply for trademark cancellation includes any person having a real interest in rectifying the register, including one who would be appreciably disadvantaged in a legal or practical sense by the trademark remaining on the register. A prior registered proprietor of a similar mark trading in the same market has standing where likelihood of confusion would prejudice commercial interests.
Trademarks — Cancellation for Non-Use — Burden of Proof
In applications for trademark cancellation on grounds of non-use, the initial burden lies on the applicant to prove lack of bona fide use. Upon such proof, the burden shifts to the registered proprietor to adduce evidence of actual use. The registered proprietor is better placed to prove use by adducing evidence of actual trading activity.
Trademarks — Bona Fide Use — Definition and Purpose
Bona fide use of a trademark means actual use by the registered proprietor or a third party with the proprietor's authority, and such use must be consistent with the trademark's function relating to goods being marketed or traded. Mere adoption of a mark without bona fide use in an attempt to reserve it for future use will not create or sustain trademark rights. Section 46 of the Trademarks Act 2010 aims to prevent registration of trademarks for potential future use or without intention of bona fide use.
Trademarks — Evidence of Non-Use — Dormant Company Status
A company's failure to file any returns, resolutions, or statutory forms on the company register since incorporation constitutes circumstantial evidence of dormancy and corroborates findings of non-use of a registered trademark. A dormant company is one not doing business and having no accounting transactions in a financial year.
Tribunal Procedure — Ex Parte Proceedings — Service Requirements
A tribunal may proceed ex parte where it is proved that every effort was made to serve the respondent and the respondent declined to participate in proceedings. Regulation 72(3) of the Trademark Regulations does not prohibit ex parte proceedings where service has been effected and the respondent has knowledge of the application but fails to file a counterstatement.
Tribunal Jurisdiction — Injunctive Relief
The Registrar of Trademarks has no jurisdiction to grant injunctive relief prohibiting use of a trademark. Such relief is the preserve of Courts of Judicature.

Legislation cited (6)

Cases cited (6)

  • Potomac Tobacco Company Ltd v British American Tobacco Co Ltd (Miscellaneous Application No. 436 of 2006)
  • 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) R.P.C 19
  • Blue Bell, Inc. v Farah Mfg. Co., United States Court of Appeals, Fifth Circuit, 1975 508 F.2d 1260, 185 U.S. P.Q.1
  • Tecno Telecom Limited v Kigalo Investments Ltd (Miscellaneous Cause No. 17 of 2011)

Full judgment

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

Rani Refreshments FZCO v Akaba Investments Limited (Trademark Application 29459 of 2020) 2023 UGRSB 6 (15 March 2023)
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.