Trust Sate Uganda Ltd v Ninsima Moreen (Trademark Application No. UG T 2024 082777)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
The Registrar held that the trademark application was filed in bad faith. The applicant company was incorporated by Bashaija Moses, who had previously sold his agrochemical business including rights to the product branded IMITRUST to the opponent and covenanted not to engage in similar business. Filing for the trademark through a newly incorporated company after selling the business rights constituted dishonest conduct intended to frustrate the opponent's freedom to operate. The application was refused under section 23 of the Trademarks Act as likely to deceive and contrary to law.
Outcome
Trademark application refused; opponent may proceed with her own application
Facts
The opponent purchased an agrochemical business from Bashaija Moses on 9 October 2023, including rights to products branded IMITRUST. The sale agreement included a covenant that Bashaija would not engage in similar business in Uganda. The manufacturer subsequently transferred distribution rights to the opponent's company. After the sale, Bashaija incorporated Trust Sate Uganda Ltd on 25 January 2024 with 10 shares. On 14 April 2024, the applicant company filed to register IMITRUST as a trademark in class 1. On 2 July 2024, Bashaija transferred his shares to another director. The opponent discovered the application and filed opposition on grounds of bad faith, arguing Bashaija was using the applicant company to frustrate her commercial interests in a product whose rights he had already sold.
Issues
- Whether the applicant's application for registration of the trademark IMITRUST was filed in bad faith to the opponent's detriment.
Orders
- Opposition succeeds.
- Application for registration of trademark IMITRUST (Application No. UG/T/2024/082777) refused.
- Opponent is free to proceed with registration of trademark application number UG/T/2024/083284.
- Costs awarded to the opponent to be paid by the applicant.
Rules and key headnotes
Legislation cited (10)
- Trademarks Act Cap 225 s.23
- Trademarks Act Cap 225 s.57
- Trademarks Act Cap 225 s.68
- Trademarks Act Cap 225 s.99(2)
- Trademarks Act Cap 225 s.44(2)
- Trademark Regulations 2023 reg.31
- Trademark Regulations 2023 reg.32
- Evidence Act s.101(2)
- Civil Procedure Act Cap 282 s.27
- Paris Convention on the Protection of Industrial Property 1883 art.10 bis
Cases cited (8)
- Elite Gold Ltd v Indo Bali Distributors Ltd (Consolidated Trademark Cancellation Nos. 045697, 043533, 032264)
- Sky Kick UK Ltd v Sky Ltd [2024] UKSC 36
- Chocoladefabriken Lindt & Sprüngli (Case C-529/07)
- Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ v EUIPO (Case C-104/18)
- Nampa v Ssebagala (Civil Suit No. 913 of 2004)
- Uganda Revenue Authority v Stephen Mabosi (Supreme Court Civil Appeal No. 26 of 1995)
- Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Case C-529/07)
- Interfoto Picture Library Ltd v Stiletto Visual Programmes [1989] QB 433
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.