Wakilii

Top Motor Parts Co. LLC v Alitraco Investments Limited (Trademark Registration 46681 of 2012; Trademark Registration 46682 of 2012)

Tribunal · [2026] UGRSB 34 · 2026 Application Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of registered trademarks before the Registrar of Trademarks
Decision
Application for cancellation of trademarks dismissed on the merits

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Registrar dismissed the application for cancellation of two trademarks registered by the respondent. The preliminary objections based on res judicata and limitation were overruled because the earlier High Court proceedings were disposed of on technicality rather than on merits, the parties and causes of action differed, and the limitation period under section 45 did not apply to applications under section 88. On the merits, the Registrar held that indicating 'importer' on the application form did not constitute registration in error, and that the applicant failed to prove bad faith at the time of filing. The principle of territoriality meant that foreign trademark registration in the UAE did not automatically confer rights in Uganda.

Outcome

Application for cancellation of trademarks dismissed on the merits

Facts

The applicant, a UAE company, manufactures automotive parts under the TMP trademark, which it registered in the UAE, China, Tanzania and Uganda in various classes. The respondent, a Ugandan company importing motor vehicle spare parts, registered two TMP trademarks (word mark and device) in Uganda in class 7 on 20 December 2012. When the applicant later sought to register the same marks in Uganda in class 7, it found the respondent had already registered them. The applicant alleged the respondent registered the marks in bad faith, used them on counterfeit goods labelled as originating from 'Toto Motor Parts Ltd' (a company with the same directors and shareholders as the respondent), and that the marks were registered in error because the respondent indicated 'importer' rather than 'owner' on the application form. The respondent denied the allegations and raised preliminary objections that the application was res judicata and time-barred.

Issues

  1. Whether the High Court decision in Miscellaneous Cause No.59 of 2019 and Misc. Application No.243 of 2020 are a bar to the Registrar's jurisdiction to entertain the application.
  2. Whether the application is time barred.
  3. Whether trademark number 46681 and 46682 were registered in error.
  4. Whether trademark number 46681 and 46682 were registered in bad faith.

Orders

  • Application dismissed.
  • Each party to bear its own costs.

Rules and key headnotes

Res Judicata — Applicability — Disposal on Technicality versus Merits
The doctrine of res judicata does not apply where an earlier suit was disposed of on a preliminary or procedural ground rather than on the merits, and no decree was extracted conclusively determining the rights of the parties.
Trademarks — Cancellation — Limitation Period — Section 45 versus Section 88
The seven-year limitation period under section 45 of the Trademarks Act applies only to applications for removal based on rights in the country of origin brought before the High Court, and does not apply to applications for cancellation under section 88 brought before the Registrar on grounds of error or bad faith.
Trademarks — Registration in Error — Meaning and Scope
Registration in error under section 88 of the Trademarks Act means a mistake was made during the registration process such that a trademark which ought not to have been registered was registered, including failure to properly apply relative or substantive grounds of examination or contravention of statutory provisions, but does not include formality errors such as misspelling or misstating the manner of filing which can be rectified under section 90.
Trademarks — Territoriality Principle — Foreign Registration
By virtue of the principle of territoriality under Article 6 of the Paris Convention and section 36(3) of the Trademarks Act, rights acquired by registration of a trademark in another country do not extend to Uganda, and a trademark registered in Uganda is regarded as independent of marks registered in other countries including the country of origin.
Trademarks — Owner — Meaning under Section 7 — Importer Status
The word 'owner' in section 7 of the Trademarks Act includes both a person who has acquired ownership by registration and a person seeking to be registered as owner, and indicating 'importer' on the application form does not in itself disqualify an applicant from being an owner, as traders may order goods manufactured abroad and branded with their locally registered trademarks for importation and sale.
Trademarks — Bad Faith — Elements and Proof
Bad faith in trademark registration presupposes a dishonest state of mind or intention to undermine the interests of third parties in a manner inconsistent with honest practices, or to obtain exclusive rights for purposes other than the essential function of indicating origin, and must be assessed as at the date of filing the application with circumstantial evidence from which dishonest intention can be inferred.
Trademarks — Bad Faith — Knowledge of Third Party Use Insufficient
The fact that an applicant knows or must know that a third party has long been using an identical or similar sign for an identical or similar product in another jurisdiction is not sufficient in itself to permit the conclusion that the applicant was acting in bad faith.

Legislation cited (15)

Cases cited (11)

  • Misc. Cause No.59 of 2019: Top Motor Parts LLC v Alitraco Investments Ltd and Uganda Registration Services Bureau
  • Miscellaneous Application No.0243 of 2020 arising from Misc. Cause No.0059 of 2019: Alitraco Investments Ltd v Top Motor Parts LLC
  • Anthony Namboro and Fabiano Waburo-Lio v Henry Kaala (1975) HCB 315
  • Three Ways Shipping Services (Group) Ltd v MTN (U) Ltd (Miscellaneous Application No. 103 of 2015)
  • Hon.Maj.Gen.(Rtd) Kahinda Otafiire v The New Vision Printing and Publishing Corporation and 2 Others (Civil Suit No. 505 of 2019)
  • Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
  • Kampala Stocks Supermarket v Seven Days International Ltd (Civil Suit No. 112 of 2015)
  • Sky Kick UK Ltd v Sky Ltd [2024] UKSC 36
  • Niinsima Moreen v Trust Sate Ltd opposition-to-trademark-No-082777-IMITRUST
  • Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Case C-529/07)
  • V G Keshwala and Sons v Crane Paper Ltd application for cancellation of Trademark No 83036 DIAMOND

Full judgment

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

Top Motor Parts Co. LLC v Alitraco Investments Limited (Trademark Registration 46681 of 2012; Trademark Registration 46682 of 2012) [2026] UGRSB 34 (19 June 2026)
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.