Uganda Exim Limited v Exim Bank Uganda Limited (Trademark Application No. UG T 2024 082539)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
The Assistant Registrar dismissed the opposition to trademark registration on two grounds: first, the opposition was filed two days beyond the mandatory 60-day statutory deadline without seeking an extension of time; second, the opponent failed to comply with mandatory requirements under Regulation 29 by not providing trademark numbers, Gazette publication details, or evidence of registered marks, thereby failing to establish a valid cause of action.
Outcome
Opposition dismissed; applicant's trademark application may proceed to registration
Facts
On 30 January 2023, Uganda Exim Limited applied to register the trademark "UgExim" in Class 35 for export promotion services. The application was approved and published in the Uganda Gazette Vol. CXVII No. 34 on 24 May 2024. On 24 July 2024, Exim Bank Uganda Limited filed a notice of opposition, contending that the applicant's mark was similar to its registered marks and would cause consumer confusion and dilute the distinctiveness of its marks. The applicant filed a counterstatement on 16 September 2024 raising preliminary objections challenging the legality of the opposition. The hearing was held on 20 February 2025.
Issues
- Whether the opposition was filed out of time?
- Whether the opposition establishes a cause of action?
Orders
- The preliminary objections are upheld.
- The opposition is dismissed.
- Each party to bear their own costs.
Rules and key headnotes
Legislation cited (13)
- Trademarks Act Cap. 225 s.12
- Trademarks Act Cap. 225 s.12(1)
- Trademarks Act Cap. 225 s.12(3)
- Trademarks Act Cap. 225 s.96
- Trademarks Regulations 2023 reg.28
- Trademarks Regulations 2023 reg.29
- Trademarks Regulations 2023 reg.29(1)
- Trademarks Regulations 2023 reg.29(2)
- Trademarks Regulations 2023 reg.31
- Trademarks Regulations 2023 reg.32
- Trademarks Regulations 2023 reg.79
- Interpretation Act Cap. 2 s.34(1)(a)
- Constitution of the Republic of Uganda Article 126(2)(e)
Cases cited (13)
- Kingston Enterprises Limited and 3 Others v Standard Chartered Bank (U) Limited (Civil Appeal No. 446 of 2021)
- Dupont Steel v Sirs [1980] All ER at 541
- Sussex Peerage Case (1844) 11 Cl & Fin 85
- Byanyima Winnie -v- Ngoma Ngime CR No.9/2001
- Warburton v. Loveland, (1824-34) All ER Rep 589
- Finca Uganda Ltd v Semakula Rozio (Miscellaneous Application No. 26 of 2023)
- Mulindwa George William v Kisubika Joseph (Supreme Court Appeal No. 12 of 2014)
- Horizon Coaches v Edward Rurangaranga and Mbarara Municipal Council (Supreme Court Civil Appeal No. 18 of 2009)
- Athanasius Kivumbi Lule v Hon. Emmanuel Pinto (Constitutional Petition No. 5 of 1997)
- Utex Industries Ltd v Attorney General (Supreme Court Civil Appeal No. 52 of 1995)
- Auto Garage and others v. Motokov [1971] EA 514
- Attorney General v Major General David Tinyefuza (Supreme Court Constitutional Appeal No. 1 of 1997)
- Attorney General vs. Oluoch (1972) EA 392
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.