Wakilii

Techno Telecom Ltd v Kigalo Investments Ltd (Miscellaneous Cause No. 17 of 2011)

High Court · [2011] UGCOMMC 112 · 2011 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application under sections 45 and 46 of the Trademarks Act 2010 to remove respondent's trademark from the register on grounds of prior registration in country of origin and non-use
Decision
Trademark TECNO No. 31786 removed from register; matter referred to relevant authorities for investigation

Observed later treatment

Treatment recorded in citing cases followed in 3 Sequitur — Uganda’s citator · Derived from citing cases in the Wakilii corpus — not an assertion that this case is good law.

Citator coverage is limited to judgments in the Wakilii corpus and source-matched treatment records. Absence of a signal is not an assertion that the case remains good law.

Good law Followed in 3 cases and applied in 0 cases, with no adverse treatment recorded. Citations rising — 4 citing cases on record, 4 in the most recent three data years. Derived from citing cases in the Wakilii corpus — a deterministic signal, not legal advice.

AI-generated summary. This summary was generated by AI from the full text of the judgment. It may contain errors or omissions—always read the source judgment before relying on it.

Holding

The High Court ordered removal of the respondent's TECNO trademark from the register under sections 45 and 46 of the Trademarks Act 2010. The court held that the applicant, as prior registrant in Hong Kong (treated as part of China for trademark purposes), had established its right to the mark. The respondent's practice of importing unlabelled phones and affixing the TECNO mark was not bona fide use but rather constituted counterfeiting and passing off, which the law does not protect.

Outcome

Trademark TECNO No. 31786 removed from register; matter referred to relevant authorities for investigation

Facts

The applicant, a Hong Kong company incorporated in 2005, registered the trademark TECNO in Hong Kong in October 2005 for goods in class 9 including mobile phones. It appointed Tecno Investments Ltd as its Ugandan agent in 2009. TECNO products had been in the Ugandan market predating the respondent's registration of the same mark in Uganda in 2008. In December 2010, the respondent's lawyers wrote to the applicant demanding it cease use of the TECNO mark in Uganda. The respondent imported unlabelled mobile phones from China and affixed the TECNO mark to them before selling them to the public. The respondent was neither a manufacturer nor a dealer in genuine TECNO products nor had it been authorized by the applicant to use the mark. The applicant brought this application seeking removal of the respondent's trademark registration on grounds of prior registration in the country of origin and non-use.

Issues

  1. Whether the respondent's trademark can be removed from the register for proof of prior registration of trademark in country of origin of the goods under section 45 of the Trademarks Act 2010.
  2. Whether the respondent's trademark can be removed from the register for non-use of the trademark under section 46 of the Trademarks Act 2010.
  3. Whether China and Hong Kong are one and the same country for purposes of trademark law.
  4. Whether the use of a trademark by affixing it to unlabelled imported goods constitutes bona fide use under the Trademarks Act 2010.

Orders

  • The trademark TECNO registered by the respondent as No. 31786 in 2008 be removed from the register of trademarks in Uganda with immediate effect in accordance with sections 45 and 46 of the Trademarks Act 2010.
  • The matter is referred to the relevant authorities for investigation and further management in light of the court's finding that the respondent's conduct contravenes the Trademarks Act 2010.
  • Costs of the application awarded to the applicant.

Rules and key headnotes

Trademarks — Removal from Register — Prior Registration in Country of Origin
A trademark may be removed from the register under section 45 of the Trademarks Act 2010 if an aggrieved person proves that the mark is identical with or nearly resembles a trademark which was, prior to registration in Uganda, registered in respect of the same goods or description of goods in the country from which the goods originate.
Trademarks — Hong Kong and China — Territorial Status for Trademark Purposes
For purposes of trademark law and reciprocity under the Paris Convention, Hong Kong as a Special Administrative Region of China is treated as part of China. Hong Kong falls within the definition of a territory subject to the authority of a Paris Convention country that has acceded to the Convention on behalf of that territory.
Trademarks — Bona Fide Use — Essential Function
There is bona fide or genuine use of a trademark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.
Trademarks — Removal from Register — Non-Use and Lack of Bona Fide Intention
A trademark may be removed from the register under section 46 of the Trademarks Act 2010 if it was registered without a bona fide intention that it should be used in relation to the goods or services and there has been no bona fide use of the mark by the owner up to the date one month before the application for removal.
Trademarks — Counterfeiting and Passing Off — Not Bona Fide Use
The practice of importing unlabelled goods and affixing a registered trademark to them before selling them as genuine products of the trademark owner does not constitute bona fide use of the trademark. Such conduct amounts to counterfeiting and passing off, and is an offence under section 77(c) of the Trademarks Act 2010. Courts will not sanction such illegality as bona fide use.
Electronic Evidence — Data Messages — Admissibility
Data messages, including information obtained from the internet, are admissible under section 8 of the Electronic Transactions Act 2011. However, the data message must comply with authenticity requirements under section 7 of that Act. Where the website from which the data was obtained is clearly indicated on the document and the information can be easily verified, the document passes the test for authenticating data messages.
Affidavits — Agent Swearing on Behalf of Principal — Knowledge
An agent may swear an affidavit on behalf of a principal on matters within the agent's knowledge. Knowledge can be acquired through the five human senses — seeing, hearing, smelling, tasting or touching followed by understanding and perceiving what one has sensed. The principal-agent relationship requires full disclosure of information relating to the principal's business, and an agent who has been so informed may competently depose to such facts.

Legislation cited (16)

Cases cited (15)

  • Ansul BV v Ajax Brandbeveiling BV (2005) Ch 97
  • La Mer Technology Inc v Laboratories Goemar SA (2004) ECR 1-1159
  • Blue Bell Inc v Farah Mfg Co 508 F.2d 1260 (5th Cir. 1975)
  • Regina v Johnstone [2003] 3 All ER 884
  • Makula International Ltd v Cardinal Nsubuga (1982) HCB 11
  • Charles Kabunga v Christopher Baryahura (1995) KALR 535
  • Bawa Singh Bharj (Properties Limited) v Estate Consultants (1998) KALR 918
  • Yafesi Tegike v Jamada Wakafutuli (1996) KALR 435
  • Uganda Journalists Safety Committee v Attorney General (1997) KALR 381
  • Premchand Raichand Limited v Quarry Services of EA Limited (1969) EA 514
  • MB Nadala v Father Lyding [1963] 1 EA 706
  • Green watch v Attorney General (2003) 1 EA 87
  • Joy Kaingana per John Kaingana v Dabo Boubon (1986) HCB 59
  • Yusuf v Nokrach (1971) EA 104
  • La Consortium & Vending CC t/a La Enterprises v MTN Service Provide (PTY) Ltd No. 2004/20602, South Gauteng High Court, Johannesburg

Cases citing this judgment (4)

How later Ugandan judgments in the Wakilii corpus have cited this case. Treatment labels come from Sequitur — Uganda’s citator — each backed by a verbatim span from the citing judgment, and are not an assertion that this case is, or is not, good law.

Full judgment

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

Techno Telecom Ltd v Kigalo Investments Ltd (Miscellaneous Cause No. 17 of 2011) [2011] UGCommC 112 (28 November 2011)
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.