In Mandella Millers Limited v Dembe Enterprises Limited ([2024] UGRSB 16), the Uganda Registration Services Bureau (URSB) clarified critical rules on trademark assignments and proof of genuine (bona fide) use. Here’s what businesses need to know.
Background
Dembe Enterprises registered the SUPREME trademark in 2007 for Class 30 goods (e.g., biscuits, rice). In 2020, Mandella Millers applied for the same mark but was blocked due to Dembe’s registration. Mandella later sought cancellation of Dembe’s mark, alleging non-use since 2016.
During the cancellation process, Dembe assigned the SUPREME mark to Pallet Masters Uganda Ltd. However, the assignment deed only covered rice, not all goods under the registration. This error triggered legal scrutiny.
Key Rulings by the Registrar
- Partial Assignments Are Valid but Error-Prone
Section 31 of Uganda’s Trademarks Act permits partial assignments (e.g., transferring rights for rice only). However, the assignment certificate must match the deed. Here, the certificate incorrectly implied a full transfer, forcing Pallet Masters to amend it to reflect only rice. - Assigning Contested Marks: A Risky Move
While legal, transferring a trademark during cancellation proceedings is risky. The Registrar advised waiting for outcomes to avoid complicating ownership rights. - Insufficient Proof of Bona Fide Use
Dembe failed to prove genuine commercial use. Images of “Supreme” biscuits lacked context, and a referenced invoice was missing. Without sales data, distributor statements, or market evidence, Dembe could not meet the high threshold for bona fide use.
Key Lessons for Businesses
Avoid Assigning Trademarks Under Dispute:
Transferring a mark mid-cancellation invites administrative hurdles and reputational risks. Delay assignments until proceedings conclude.
Proving Bona Fide Use Requires Concrete Evidence:
Pictures of products or assignment deeds are insufficient. Submit invoices, sales reports, distributor agreements, or witness statements to demonstrate active, commercial use in Uganda.
Double-Check Assignment Documentation:
Ensure deeds and certificates align precisely. Errors can invalidate transfers or require costly corrections.
Why This Matters
This case reinforces that trademarks demand proactive management. Businesses must maintain clear records of use and avoid hasty transfers during disputes. For Uganda’s market, evidence is king—ambiguity undermines legal claims.
Authored by:
Brian Kalule (Partner) and Judith Kagere (Associate)
