THE PROTECTION OF FAMOUS TRADE MARKS

In 2004, Benson & Hedges (Overseas) Limited filed an opposition against the registration of trade mark application UG/T/2004/039465 B&H in class 9. Benson & Hedges based its opposition on the local and international reputation vesting in the BENSON & HEDGES trade marks, including the B&H trade marks. It alleged, in effect, that its trade marks were so well-known in Uganda and abroad that the use of the B&H trade mark in relation goods in class 9 would dilute that reputation. Benson & Hedges relied on article 6bis of the Paris Convention as the basis for its opposition.

Despite being filed in 2004, the Registry heard the matter on an ex parte basis in June 2024. In its ruling, the Registry deals with the issue of delay and was critical of the opponent for failing to prosecute its opposition timeously. Insofar as the protection sought by the opponent, the Registry recognised that while Uganda is a signatory of the Paris Convention, the protection afforded to famous trade marks was through defensive registrations. The Registry held, therefore, that had the opponent wished to protect its trade mark from dilution in Uganda, it would have had to secure defensive registrations for the B&H trade marks. The Registry found, in effect, that it was not open to the opponent to seek protection of its famous trade mark through the back door of article 6bis in light of the protections afforded under the Act. It should be noted that while Uganda’s trade mark law has been revised since 2004, the protection afforded to famous trade marks remains unchanged.

Source: judgement.