[2024] UGCommC 325

#### 5 **THE REPUBLIC OF UGANDA**

#### **IN THE HIGH COURT OF UGANDA AT KAMPALA**

## **(COMMERCIAL DIVISION)**

#### **CIVIL SUIT No. 724 OF 2019 & CIVIL SUIT No. 427 OF 2020 (CONSOLIDATED)**

10 **MODINO FURNITURE COMPANY LIMITED ............................................... PLAINTIFF**

**VERSUS**

#### **1. HOMEART UGANDA LIMITED**

**2. DOGTAS KELEBEK MOBILYA SANAYE VE TICARET ANONIM SIRKETI ………………………………………. DEFENDANTS**

### **BEFORE: HON. LADY JUSTICE SUSAN ABINYO**

#### **JUDGMENT**

#### Introduction

The Plaintiff in HCCS No. 724 of 201 9: Modino Furniture Company Limited instituted

- 20 the suit against Home Art Uganda Limited claiming that the Defendant had infringed on its trademark comprising of the words "Dogtas". ln its written statement of Defence; Home Art Uganda Limited asserted that they had authorization through an agreement to use the trademark from its true owner Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi, who had registered - 25 their trademark earlier, and the same was recognized according to the international protocol subscribed to by both Uganda and Turkey, where the trademark was registered.

The Plaintiff in HCCS No. 427 of 2020: Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi instituted the suit against Modino Furniture Company Ltd, premised

30 on a claim of trademark infringement arising from the Defendant's illegal or unlawful registration and use of the Plaintiff's trade Mark without the Plaintiff's consent. In its Defence, Modino Furniture Company Ltd averred that it was the recognized user of the trademark name "Dogtas", having registered the same on 17th October 2018.

# 5 Background

During the scheduling proceedings, Counsel for the parties in Civil Suit No. 724 of 2019 and Civil Suit No. 427 of 2020 indicated to the Court that the two suits had similar facts and that similar questions of law would arise. Accordingly, the application for consolidation of the said two suits was granted by consent of

10 Counsel for the parties therein. It was agreed that Modino Furniture Company Limited would be referred to as the Plaintiff; Home Art Uganda Limited and Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi are the Defendants.

The summary of the facts is that the Plaintiff company was incorporated in 2018, makes and supplies furniture in Uganda as a Ugandan Furniture store. Dogtas

- 15 Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi the 1st Defendant on the other hand is a company incorporated and carrying on business in Turkey with the trademark name 'Dogtas'. Home Art which was initially sued by Modino in Civil Suit 724 of 2019 was incorporated in 2018 under the Laws of Uganda and on the 1st day of August 2018 executed a Franchise Agreement with Dogtas Kelebek - 20 Mobilya Sanayi Ve Ticaret Anonim Sirketi effectively allowing them to be the sole and exclusive authorized distributor and master franchise of the "Dogtas" products in Uganda.

The execution of the said Franchise Agreement is based on the fact that Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi is the owner of the "DOGTAS"

25 trademark having registered it in the country of origin Turkey under the Paris Convention for Protection of lndustrial Property and internationally under the World lntellectual Property Organization. That sometime in 2018, without the knowledge and authorization of the 1st Defendant, the Plaintiff illegally and unlawfully registered the trademark "Dogtas" with the Uganda Registration 30 Services Bureau vide trademark No. 63117 under part A on 17th October, 2018 and it is on that background that Home Art was initially sued. The major point of divergence is related to the use and ownership of the trademark described as "DOGTAS"

# Representation

35 Counsel Damalie Tibugwisa jointly appeared with Counsel Bright Natumanya of M/s TARA Advocates for the Plaintiff, and Counsel Nasser Sserunjogi of M/s MAGNA Advocates appeared for the Defendants.

### Issues

At the hearing of the said consolidated suits, three (3) issues were agreed upon 40 for determination by the Court as follows;

- 5 1. Who is the rightful owner of the Dogtas Trademark? - 2. Whether there is any trademark infringement, and if so by whom? - 3. What remedies are available to the parties?

Counsel for the Defendants in their submissions added the fourth issue to read: Whether the trademark was legally and lawfully registered in Uganda?

10 Evidence

The Plaintiff adduced the evidence of Ms. Sarah Rukundo (hereinafter referred to as "PW1") the Senior Registration Officer, Uganda Registration Services Bureau(URSB), and Mr. Semanda Khuzaimah Gayana the Company Director (hereinafter referred to as "PW2"). The Defendants adduced the evidence of Mr.

15 Mohamed Santur Ghedi the Managing Director of the 1st Defendant (hereinafter referred to as "DW1"). The evidence adduced in the trial bundle by the Plaintiff in HCCS No. 724 of 2019, and HCCS No. 427 of 2020(consolidated) was marked PE1- PE8. The Defendants evidence adduced in the trial bundle was marked DE1-DE5 and DE6-DE11 in the supplementary trial bundle.

# 20 Summary of the Plaintiff's evidence

The evidence adduced indicated the process of trademark application and registration as follows; trademark registration and protection in Uganda is carried out by URSB and is governed by the Trademarks Act of 2010, and the Regulations made thereunder. That upon submitting a trademark application, the Registrar of

- 25 Trademarks (herein also referred to as "the Registrar") searches the Register as to the trademark availability and examines the trademark application as to whether it has all the requisite legal particulars. If the trademark application meets the formal and legal requirements, the Registrar then issues a gazette notice requiring the Applicant to publish the same in the URSB Journal or the gazette for 60 days - 30 (the publication period).

In addition, during the said 60 days of publication, any aggrieved party may raise objections to the trademark registration, and according to the record, the Registrar did not receive any objection to the trademark application for "Dogtas" in class 20 in the name of Modino Furniture Company Ltd; where the publication

35 period ends and no objection to registration is raised and upon the Applicant's application, the Registrar issues a registration certificate and the Applicant becomes the owner of the trademark as registered.

That according to the Register of Trademarks, the Plaintiff is the only registered proprietor of the Trademark number UG/T/2018/063117" Dogtas", which was 40 registered in 2018 in respect of class 20 for "Furniture, mirrors, picture frames;

5 containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, ivory, whalebone or mother - of – pearl; shells; meerschaum; yellow amber." A copy of the said trademark certificate was attached and marked PE4.

That upon registration, the Plaintiff set up a furniture store in 2018 located in the Industrial area of Kampala, where it operates both a workshop and showroom; Its

- 10 products include beds, office furniture, kitchen cabinets, and other furniture products as seen in Annexture "A" marked PE2. In July 2019, they were surprised to find out that the 1st Defendant opened up a large furniture store on the busy and heavily trafficked Jinja Road at Plot 22, Spear House under the brand name and style of DOGTAS Exclusive Home Furniture and offers for sale and distribution - 15 furniture products to the public. That they took photographs of the 1st Defendant's branding on the building as proof that it is using the Plaintiff's trademark, copies thereof are attached and marked PE3.

That the Plaintiff has never authorized the 1st Defendant to use the said trademark, which has caused and or is likely to confuse the Plaintiff's customers and the 20 general public, since most people now perceive and or are likely to confuse the 1st Defendant to be the owner of the DOGTAS trademark whereas not, hence the loss of value in the trademark and cause of financial loss to the Plaintiff.

## Summary of the Defendants evidence

That the 1st Defendant company is a company incorporated under the Laws of

- Uganda on 31st 25 July 2018 and carries on the business of selling furniture under the "DOGTAS" brand in Uganda. A copy of the certificate of incorporation is attached and marked DE2. That the 2nd Defendant; Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi, is a limited liability company duly incorporated under the Laws of Turkey and carries on the business of manufacturing and selling furniture - 30 to the international market. It equally holds the licence Trademark of 'DOGTAS'. That Home Art Uganda Limited the 1st Defendant imports goods from the 2nd Defendant who is based in Turkey under the "DOGTAS" brand for selling in Uganda as a licensee under the Franchise Agreement between the two parties.

In addition, the "DOGTAS" trademark is registered internationally under the World 35 Intellectual Property Organization(WIPO) and in the country of origin(Turkey) by the Trademark owner Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi, who became the lawful owner of the mark in issue and therefore acquired the exclusive rights to use or to authorize any person to use the said trademark in relation to furniture or other related products. That the 1st Defendant executed a

40 Franchise Agreement between itself and the 2nd Defendant for the use of its

- 5 trademark name "DOGTAS" on 1st August 2018 for an initial period of 5 years and a successive renewal for another 5 years upon the expiration of the initial term, unless terminated by either party. A copy of the agreement is attached and marked DE1. That Home Art Uganda limited the 1st Defendant did not need any consent and or authorization from anybody save for the 2nd Defendant, in so far - 10 as the use of the "DOGTAS" trademark is concerned, since it had permission from the trademark owner.

That the Plaintiff has since the 17th day of October 2018 dealt in Furniture under the name and style "Dogtas"; whereof the same resembles and bears similarity in grammar and phonetics with the trademark "DOGTAS" being used by the 1st 15 Defendant and a trademark of the 2nd Defendant, which had already been registered. That both Home Art Uganda Limited and Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi are making use of the said trademark legally and the use, and registration by Modino Furniture Company Ltd the Plaintiff was illegal 20 and unlawful; it amounts to trademark infringement by the Plaintiff.

### Determination of issues

This Court will consider issues 1, and 4 raised by Counsel for the Defendants concurrently, and issues 2 and 3 separately.

# 25 **Issue No.1: Who is the rightful owner of the Dogtas Trademark?**

# **Issue No.4: Whether the trademark was legally and lawfully registered in Uganda?**

# Submissions of Counsel for the Plaintiff

Counsel relied on section 58 of the Trademarks Act, 2010 and *Anglo Fabrics (Bolton) Ltd and Anor Vs African Queen and Anor, HCCS No.632 of 2006,* to submit 30 that in all legal proceedings relating to a registered trademark like in this case, the fact that a person is registered as the owner of the trademark is prima facie evidence of the validity of the original registration of the trademark.

Counsel further submitted that evidence was adduced of a trademark certificate in PE4, to prove that the Plaintiff is the only registered owner of the DOGTAS 35 trademark in Uganda, and obtained exclusive right to the use of the Dogtas trademark concerning those goods as provided for under section 36 of the Act, and relied on *Colgate Palmolive Company Ltd Vs Sonde Supermarket Ltd, HCCS No. 689 of 2010,* on the proposition of law that registration gives the Plaintiff exclusive right of use in the trademark in relation to the class of goods mentioned

40 to support their submissions.

- 5 Counsel contended that the Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, 2009(hereinafter called Madrid Regulations) under Rule 14(1) provides for where the International Bureau finds that the international application conforms to the applicable requirements, it shall register the mark in - 10 the International Register, notify the offices of the designated Contracting Parties of the international registration … and send a certificate to the holder.

Counsel argued that in the instant case, the Defendants have not adduced proof of trademark registration internationally in the form of trademark certificates, and Uganda is neither a contracting state to the Madrid Protocol/ Agreement nor was

- 15 it designated as a country to extend trademark protection hence the same is inconsequential. That the purported DE-3 falls short of the trademark certificate as DW1 could not identify the documents but also confirmed that the documents were not signed, stamped, or sealed, and had no issuing authority and proof that they were trademark certificates. - 20 Counsel relied on *Kampala Stocks Supermarket Co. Ltd Vs Seven Days International Ltd, HCCS No. 112 of 2015*, which cited with approval the decision in *Anglo Fabrics(Bolton) supra*, where the Court held that:

"International trademarks are trademarks registered under international protocols like the Banjul Protocol under the Africa Regional Intellectual Property

25 Organization (ARIPO) to which Uganda is a member state. But in such a case, Uganda would have to be a designated country for purposes of registration of a trademark …" to support their submissions.

Counsel further argued that the Defendants have never filed any application in Uganda either to register the DOGTAS trademark or to oppose the Plaintiff's 30 registration, and cited the case of *Purpplemoon (U) Ltd Vs Numaa Industries, HCMA No.1137 of 2016,* where the Court held that;

*"The issue of dealing in the same goods and agency in the same goods is not the same issue of the dispute in the trademark. This is because it is possible to register a trademark that exists in another country… what is to* 35 *be considered is the registration of the Applicant in Uganda by the Registrar who ought to have taken into account any objections to registration."*

Counsel submitted that accordingly any arrangement between the Defendants is only privy to them and does not bind the Plaintiff since what is material is who in Uganda is registered and authorized to use the DOGTAS trademark and that can

40 only be the Plaintiff.

- 5 Counsel further submitted that section 44 of the Act lists requirements that must be in place if a foreign trademark is to be given protection and recognition in Uganda. That it is a requirement for the foreign trademark owner to apply to be registered in Uganda within three months from the date of an objection. Secondly, it must provide proof of registration in the country of origin. Thirdly - 10 section 44(3) of the Act places a requirement on the owner of the mark to prove that the very trademark for which protection is sought has been in use and circulated the Ugandan market prior to the date of an application by any person seeking to have the same trademark registered. There must also be a reciprocal arrangement of protection between the two countries, and that the said 15 requirements have not been satisfied by the Defendants. - Counsel further contended that DW testified that the 1st and 2nd Defendants entered into a Franchise Agreement (DE1) in Turkey to take effect in 2019 but did not know whether the 1st Defendant signed the Franchise Agreement or not. That the Franchise Agreement has never been registered by the 1st Defendant with - 20 any authority in Uganda therefore, the Defendants cannot derive any benefit from the said Franchise Agreement. That the 1st Defendant neither has the authorization to file a suit on behalf of the 2nd Defendant nor to use the DOGTAS trademark in Uganda. - Counsel submitted that under section 34 of the Act, no action for unregistered 25 trademarks can be instituted to prevent or recover damages. Secondly, no action can arise against the Plaintiff, who is the registered proprietor of the trademark with the exclusive right to use the trademark or prevent the infringement. The trademark that is the subject of the Franchise Agreement between the Defendants is called "DOGTAS" and the same was purportedly - 30 registered under the Madrid Protocol to which Uganda is not a party and the said trademark expired on 22nd April 2020, which means that the Defendants cannot derive any benefit from an expired registration and the document is ineffective. Counsel relied on the case of Purplemoon(supra) in support of their submissions.

### Submissions in reply by Counsel for the Defendants

35 Counsel relied on the definition of the word trademark in *Nice House of Plastic Vs Hamidu Lubega H CT-00-CC-CS-0 69 5-2 006* and *Vision Impex Limited Vs Sansa Ambrose & Anor, HCCS No.303 of 2013*, to submit that the trademark in issue here is "Dogtas" that was allegedly registered by the Plaintiff albeit illegally and or unlawfully for the reasons set forth thus the 2nd Defendant; Dogtas Kelebek 40 Mobilya Sanayi Ve Ticaret Anonim Sirketi registered the trademark in issue "Dogtas" internationally and produced a certificate of international

- 5 registration(DE3) and that Uganda is obliged to honor international treaties/agreements that are binding on her by virtue of Article 123 and Article 287 of the Constitution of the Republic of Uganda 1995 as amended. That the former makes provision for the execution of treaties, agreements, and conventions by the President or a Person authorized by the President while the - 10 latter recognized and expressly continued into force treaties in existence at the time of the coming into force of the 1995 Constitution. Counsel relied on *Uganda Vs Thomas Kwoyelo, Constitutional Appeal No. 01 2012*, to support their submissions. - Counsel further submitted that Uganda became a signatory to the Paris 15 Convention for the Protection of Industrial Property on the 4th day of June 1965, the Madrid Agreement concerning the international registration of Marks came into existence on April 14, 1981, and has had various revisions with the latest being the September 28th, 1979 revision; this is enforced by WIPO to which both Uganda and Turkey are member countries. That it is also pertinent to note that Uganda - became a member of WIPO on 18th 20 July 1973. That sections 44(1), 46), and 45 of the Trademarks Act of 2010, ratifies trademarks registered in countries of origin and further provides for the removal of a trademark from the register on proof of prior registration in a country of origin. - Counsel contended that it is a settled position of law that provisions of 25 international agreements bind signatories; this is to the effect that once a party is a signatory to an international treaty they are bound by the terms under such a treaty. This proposition of law is comprised of the Latin term "Pacta sunta servanda", which is provided under Article 26 of the Vienna Convention on the Law of Treaties that every treaty in force is binding upon the parties to it and must - 30 be performed by them in good faith. Counsel relied on *M/s Semuyaba, Iga & Co. Advocates Vs Attorney General of the Republic of South Sudan Miscellaneous Application No. 004 of 2022*, to support their submissions. - Counsel further contended that it is quite evident that a nation or party or country 35 that is signatory to the Paris Convention for the Protection of lndustrial Property is by virtue of Article 2 of the Madrid Agreement treated in the same way as if they had signed the Madrid Agreement. Furthermore, that the Madrid Agreement concerning the International Registration of Marks of April 14. 1891 is enforced by the WIPO to which both Uganda and Turkey are member states. The word - 40 "national" in this context includes both natural persons and artificial legal persons in pursuance to the artificial legal personality or corporate personality principle enunciated in *Salomon -versus- Salomon (1896) UKHL*. - 5 Counsel argued that by virtue of Article 4 of the Madrid Agreement concerning the international registration of marks, a party that registers a trademark internationally is entitled to protection of the mark in each of the contracting countries concerned and the same shall be as if the mark had been filed therein - direct. That as noted above Uganda and Turkey are signatories of the Paris 10 Convention for the Protection of lndustrial Property and as such are bound by the terms of the Madrid Agreement concerning the international registration of marks; the 2nd Defendant Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi is a national of Turkey and having registered the mark internationally under the Madrid Agreement ought to receive protection from Uganda, which is a member - 15 of WIPO and signatory to various international intellectual property treaties on protection for internationally registered trademarks.

Counsel further argued that the Plaintiff Modino Furniture Company Limited was illegally and unlawfully registered as the owner of the trademark "Dogtas" due to

20 the fact that the Registrar did not take into consideration the various treaties that bind Uganda in regard to the protection of internationally registered marks.

## Decision

A trademark is defined to mean a sign or mark or combination of signs or marks capable of being represented graphically and capable of distinguishing goods

- 25 or services of one undertaking from those of another undertaking. *(See section 1 of the Trademarks Act, Cap. 225 (hereinafter referred to as the "Act"); Nice House of Plastic Vs Hamidu Lubega, HCCS No.0695 of 2006, and Vision Impex Limited Vs Sansa Ambrose & Anor, HCCS No.303 of 2013)* cited by Counsel for the Defendants. - 30 A trademark is deemed to be protected when it has been legally recognized by way of registration or use. Registration is only done when the formal requirements have been met by the Applicant.

Notably, registration may be national, regional, or international. National registration is by Uganda Registration Services Bureau(URSB) while international 35 Registration, which may include regional is done through two procedures. The procedure for international registration through the World Intellectual Property Organization, WIPO, requires an Applicant to lodge separate applications in the Industrial Property Offices of all the states in which the Applicant desires protection. Where an Applicant intends to pursue this approach, he or she must

40 appoint an agent to assist him in carrying out the process. The regional registration

5 requires the procedure of filling a single application to the Africa Regional Intellectual Property Office(ARIPO) in which, the Applicant will designate the prospective countries the applicant desires protection.[1](#page-9-0)

The main contention in this case is whether the trademark "DOGTAS" was legally and lawfully registered in Uganda, if so, by whom?

10 It's trite law that upon trademark registration, the owner enjoys exclusive rights to use the trademark in relation to goods or services for which the trademark is registered. Where a party claims to have registered the trademark, proof of registration is required by the party alleging the fact of registration.

I am fully persuaded by the decision in *Anglo Fabrics (Bolton) Ltd and Anor Vs*

15 *African Queen and Anor, HCCS No.632 of 2006,* cited by Counsel for the Plaintiff, on the proposition of law that the fact that a person is registered as the owner of the trademark is prima facie evidence of the validity of the original registration of the trademark.

In the instant case, the Plaintiff contends that it is the only registered proprietor of 20 the Trademark number UG/T/2018/063117 "DOGTAS", which was registered in 2018 in respect of class 20 for "Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, ivory, whalebone or mother - of – pearl; shells; meerschaum; yellow amber." A copy of the said trademark certificate was attached and marked PE4. On the other hand,

25 the Defendants contend that the trademark described as "DOGTAS" was registered by the 2nd Defendant; Dogtas Kelebek Mobilya Sanayi Ve Ticaret Anonim Sirketi internationally, and a copy of the certificate of international registration was attached and marked DE3.

Section 44 of the Act provides for the protection of marks registered in the country 30 of origin, and subsection 4 thereof provides for the reciprocal protection of a trademark in relation to goods and services originating from a country other than Uganda where the country of origin accords to goods and services originating from Uganda the same treatment.

In the instant case, the 2nd Defendant, who contends as above, had the 35 obligation as provided for under section 44(3) of the Act, to file a notice of objection to the Registrar in respect of the application for registration by the Plaintiff for the same trademark in relation to the same goods or same description

<span id="page-9-0"></span> ¹ See Article 16(1) of the Agreement on Trade –Related Aspects of Intellectual Property Rights (TRIPS Agreement), which provides that the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.

5 of goods and to give an undertaking to the satisfaction of the Registrar that he or she will within three months from giving of the notice, apply for registration in Uganda of the trademark registered in the country or place of origin and will take all the necessary steps to complete the registration, which is not the case here.

In addition, PW1 testified that the country of origin means where the goods are 10 made, and that well-known marks acquire protection in Uganda as defensive marks meaning that there is no requirement that once you register that mark it must be used, it can be on the register without being used and it would still be protected by virtue of being a well-known mark whereas other regular trademarks have to be used for them to maintain that protection.

- 15 It's settled law that proof of registration is by a certificate of trademark registration. PW1 further stated that when she carried out the last register search of the trademark "DOGTAS", the only "DOGTAS" which was on the register was registered in the name of Modino Furniture Company Limited and that there is no application or registration for the same trademark. - 20 The proposition of the law is that whoever alleges a given fact, and desires the Court to give judgment on any legal right or liability dependent on the existence of any fact, has the burden to prove that fact unless it is provided by law that the proof of that fact shall lie on another person. *(See sections 101 & 103 of the Evidence Act, Cap 8, and Takiya Kashwahiri & Anor Vs Kajungu Dennis, CACA No.* 25 *85 of 2011)*

In the absence of any evidence by the 2nd Defendant to prove that either a notice of objection was lodged with the Registrar upon the Plaintiff's application for registration of the said mark or that the 2nd Defendant had applied for registration in Uganda of the trademark "DOGTAS", which was registered in the 30 country of origin, the 2nd Defendant cannot derive any benefit of protection in

Uganda of the said mark registered only in the country of origin.

In other words, registration of the "DOGTAS" trademark in the country of origin under the Paris Convention for the Protection of Industrial Property, to which Uganda and Turkey are signatories neither accords automatic protection of the

35 said mark in Uganda nor bars registration in Uganda. *(See Article 6 of the Paris Convention for the Protection of Industrial Property (as amended on September 28, 1979)* on the territorial principle, which provides that a mark duly registered in a country of the union shall be regarded as independent of marks registered in the other countries of the union, including the country of origin.

5 The 2nd Defendant, therefore, failed to discharge the legal burden of proof to the required standard, which is on a balance of probabilities in civil cases *(See Kamo Enterprises Limited Vs Krystalline Salt Limited, SCCA No. 08 of 2018)*

For the foregoing reasons, I am unable to agree with the submission of Counsel for the Defendants that Modino Furniture Company Limited the Plaintiff was

10 illegally and unlawfully registered as the owner of the trademark "Dogtas" due to the fact that the Registrar did not take into consideration the various treaties that bind Uganda in regard to the protection of internationally registered marks.

Consequently, this Court finds that the Plaintiff lawfully registered, and owns the "DOGTAS" Trademark in Uganda.

## 15 **Issue No.2: Whether there is any trademark infringement and if so by whom?**

Infringement of a trademark occurs when a person, not being the owner of the trademark or authorized by the owner of the trademark, uses the mark identical to or resembling it, as to be likely to deceive or cause confusion, in the course of trade in relation to any goods of the same description.

- 20 The phrase "likelihood of confusion" is the probability that a reasonable consumer in the relevant market will be confused or deceived, and will believe that the infringers' goods or services come from, or is authorized by the actual owner. *(See Nairobi Java House Ltd Vs Mandela Auto Spares Ltd, HCCA No. 13 of 2015* cited by Counsel for the Defendants on the proposition of law that the concept of 25 likelihood of confusion must take into account all relevant factors and the matter - must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well-informed and reasonably circumspect and observant.

It was the Plaintiff's evidence that there was no registered "DOGTAS" trademark 30 in the Trademark Register when the Plaintiff applied to register the said "DOGTAS" trademark and that there was no objection by the 2nd Defendant, upon which the Plaintiff's mark was registered on the trademark register as seen in PE4.

It's trite law that upon registration of a mark, the owner acquires exclusive rights to use or to authorize any other person to use the said trademark in relation to 35 those goods for which the mark was registered. *(See section 36 of the Act* and *Colgate Palmolive Company Ltd Vs Sonde Supermarket Ltd, HCCS No. 689 of 2010)* cited by Counsel for the Plaintiff.

- 5 The Defendants evidence was that the execution of the said Franchise Agreement is based on the fact that Dogtas Kelebek Mobilya Sonayi Ve Ticaret Anonim Sirketi is the owner of the "DOGTAS" trademark with exclusive rights of the use in the trademark, having registered it in the country of origin Turkey under the Paris Convention for Protection of lndustrial Property and internationally under the - 10 World lntellectual Property Organization in which Uganda and Turkey are signatories to the World Intellectual Property Organization and the Paris Convention for the Protection of Industrial Property.

This Court finds that in the given circumstances, the registration of the Plaintiff on the trademark register as the owner of the "DOGTAS" trademark gave the Plaintiff

- 15 exclusive rights to use the said mark. The 2nd Defendant cannot be said to have obtained exclusive rights under international registration, as non-registration of the protected mark in Uganda cannot confer automatic protection of the said mark in Uganda; this is the basis of the territorial principle as seen above. - In addition, as explained above, the international registration is independent of 20 national registration and the 2nd Defendant ought to have registered the said mark in Uganda in order to obtain protection in Uganda.

I am unable to agree with the submission of Counsel for the Defendants that by virtue of Article 4 of the Madrid Agreement concerning the international registration of marks, a party that registers a trademark internationally is entitled

25 to the protection of the mark in each of the contracting countries concerned and the same shall be as if the mark had been filed therein direct, for reasons that Uganda is neither a designated state for protection of the said mark nor a signatory to the Madrid Agreement and Madrid Protocol.

This Court, therefore, finds the allegation by the 2nd Defendant that the trademark 30 "DOGTAS" was registered by the Plaintiff illegally and unlawfully is not supported by any evidence.

For the foregoing reason, this Court further finds that the 2nd Defendant's allegation of infringement by the Plaintiff is unsustainable in the given circumstances.

35 For reasons stated above, and in accordance with section 34 of the Act, this Court finds that the 2nd Defendant's suit against the Plaintiff to prevent the use of the "DOGTAS trademark, which was an unregistered trademark is untenable.

Notably, this Court finds that the Franchise Agreement between the 1st and 2nd Defendants that was based on an unregistered mark is inconsequential. The 1st

40 Defendant's use of the "DOGTAS" trademark in class 20, offends the principle of

5 priority registration, which applied to the Plaintiff who was registered as the trademark owner in Uganda under part A of the Trademark Register in class 20, which relates to furniture, according to the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification).

The use of the said "DOGTAS "trademark as a business name with additions of the 10 word "exclusive" by the 1st Defendant without the Plaintiff's authorization as the registered owner, therefore, amounts to infringement of the "DOGTAS" mark by the Defendants.

This Court finds that the Plaintiff has discharged the evidential burden of proof to the required standard against the Defendants.

- 15 Consequently, I find that the Defendants' unauthorized use of the "DOGTAS" trademark owned by the Plaintiff in respect of goods of the same description in class 20, which relates to furniture, that is also supplied by the 1st Defendant in the market albeit based on the said Franchise Agreement between the 1st and 2nd Defendants, amounts to infringement by the Defendants of the said mark owned - 20 by the Plaintiff.

This issue is therefore answered in the affirmative for the Plaintiff against the Defendants that there is trademark infringement by the Defendants.

## **Issue No.3: What remedies are available to the parties?**

This Court having found as above, further finds that the remedies sought by the 25 2nd Defendant are not available.

Accordingly, the 2nd Defendant's suit vide HCCS No.0427 of 2020 against the Plaintiff is dismissed with costs.

In regard to the Plaintiff's claim against the Defendants, in which this Court found in the affirmative as above, the following remedies are available to the Plaintiff.

30 This Court found as above that the Plaintiff was lawfully registered as the owner of the "DOGTAS" trademark therefore, a declaration is hereby made that the Defendants infringed on the Plaintiff's" DOGTAS" trademark.

An order for delivery up of all branding materials, posters, logos, banners, signage, and labels bearing the mark" DOGTAS" in the possession of the Defendants.

35 A permanent injunction is an order or decree by which a party to an action is required to do, or refrain from doing, a particular thing. *(See Osborn's Concise Law Dictionary (2009), Sweet & Maxwell, pg.226).*

5 Accordingly, the Defendants, their servants, and or agents are restrained from any further acts of infringement of the Plaintiff's trademark comprising of the word" DOGTAS" or in any way dealing in infringing products or offering for sale products under the mark "DOGTAS".

General damages are compensatory in nature for the damage, loss, or injury the 10 Plaintiff has suffered *(See Robert Cuossens Vs Attorney General, SCCA No. 8 of 1999).*

It's settled law that an award of general damages is at the discretion of the Court, which should be exercised judiciously *(See Crown Beverages Ltd Vs Sendu Edwards, SCCA No. 1 of 2005 [2006] UGSC)*. The Plaintiff is accordingly awarded 15 general damages of UGX 500,000,000(Uganda Shillings Five Hundred Million only)

It's settled law that where no interest rate has been provided, the rate is fixed at the Court's discretion *(See Premchandra Shenoi & Anor Vs Maximov Oleg Petrovich, SCCA No.9 of 2003)*. Accordingly, interest is awarded at the rate of 8% per annum on general damages of UGX 500,000,000 from the date of judgment

20 till payment in full. *(See Mukisa Biscuit Manufacturing Co. Ltd Vs West End Distributors Ltd (No.2) [1970] EA 469)*

This Court has taken into consideration the provision of the law under subsection 1 of section 27 of the Civil Procedure Act, Cap 282 on costs, and the decision in *Gulaballi Ushillani Vs Kampala Pharmaceuticals Ltd, SCCA No. 6 of 1998*, in which 25 the Court held that:

*"There are three general principles which govern the question of costs. The first is that costs of, and incidental to, all suits, are in the discretion of the Court. The second is that the costs ordinarily follow the event. The third is that where the trial Court has exercised its discretion the appellate Court* 30 *should not interfere unless the discretion has been exercised injudiciously or on wrong principles."* [Emphasis added]

I find no reason to deny the Plaintiff costs, which follow the event, as required under section 27(2) of the Civil Procedure Act, Cap. 282. The Plaintiff is accordingly awarded the costs of this suit.

- 35 In the final result, Judgment is hereby entered for the Plaintiff against the Defendants in the following terms: - 1. A declaration that the Defendants infringed on the Plaintiff's" DOGTAS" trademark.

- 5 2. An order for delivery up and destruction of all branding materials, posters, logos, banners, signage, and labels bearing the mark" DOGTAS". - 3. A permanent injunction restraining the Defendants, their servants, and or agents from any further acts of infringement of the Plaintiff's trademark comprising of the word" DOGTAS" or in any way dealing in infringing 10 products or offering for sale products under the mark "DOGTAS". - 4. General damages of UGX 500,000,000. - 5. Interest on (4) above at a rate of 8% per annum from the date of judgment till payment in full. - 6. Costs of the suit. - 15 Dated and delivered electronically on this 11th day of October, 2024.

SUSAN ABINYO **JUDGE** 20 **11/10/2024**