The Uganda Registration Services Bureau (URSB) has granted Mandela Millers, which is owned by Omar Mandela the permission use “Supreme” as a trademark in its business operations. The ruling was made on July 17, 2024.
In 2020, Mandela Millers had applied to URSB to have the “Supreme” trademark registered to its name but they faced resistance from Dembe Enterprises, owned by businessman Karim Hirji, which counter argued that it had registered the “Supreme” trademark in 2007.
Dembe had registered trademark in respect of coffee, tea, cocoa and artificial coffee; rice, tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
Mandela wanted the trademark in respect to flour milling products like pastries, bread, bran mash and others. Through their lawyers, MMAKS Advocates they argued that Dembe had not put the trademark in use for 13 years therefore they can’t hold onto it.
According to the law, the period of non-use of a registered trademark is three years and one month.
It also came to URSB’s notice that Dembe Enterprises had transferred the “Supreme” trademark rights to another party, J.H Agro More Africa Limited in the course of resolving the dispute.
In his ruling Denis Birungi, the assistant registrar of Trademarks at URSB said Mandela Millers had proved their claim that there has been no actual use by Dembe of “SUPREME” trademark in the market for goods.
To buttress his position further, Birungi cited a ruling in a similar case in the US (Blue Bell, Inc. v Farah Mfg. Co., United States Court of Appeals, Fifth Circuit, 1975 508 F.2d 1260, 185 U.S. P.Q.1) where court noted that: “while goods may be identified by more than one trademark, the use of each mark must be bona-fide. Mere adoption of a mark without bona-fide use, in an attempt to reserve it for the future, will not create trademark rights.”
In the end, Birungi ruled that Mandela Millers had tabled evidence to prove “non-use” of the trademark therefore their application succeeds. URSB also struck Dembe’s 2007 trademark off the register.
