A COMPARATIVE ANALYSIS OF THE LIKELIHOOD OF CONFUSION TEST IN INTELLECTUAL PROPERTY LAW IN UGANDA.

“The touchstone of trademark infringement under the Lanham Trade-Mark Act is the "likelihood of confusion," or whether a substantial number of ordinarily prudent purchasers are likely to be misled or confused as to the source of different products. Mushroom Makers, Inc., v. RG. Barry Corp., D.C.N.Y., 441 F.Supp. 1220, 1225. ( As per Black’s Law Dictionary 6th Edition (By the Publisher’s Editorial Staff) 1990.Pg. 925

Contents 

1.    Abstract.

2.    Introduction

3.    Meaning of Likelihood of Confusion

4.    How Have Courts in Uganda relayed and applied the principle of likelihood of confusion test for trademark infringement and passing off cases?

5.    How do the Ugandan courts deal with the challenges and complexities that arise in the likelihood of confusion cases, such as the use of foreign languages, the use of the internet and social media, the use of composite or stylized marks, and the use of generic or descriptive terms?

6.   How do the Ugandan courts align their likelihood of confusion decisions with the international and regional conventions and agreements on trademark protection, such as the Paris Convention, the TRIPS Agreement, ?

7.    Conclusion.

ABSTRACT.

The likelihood of confusion test is a key concept in intellectual property law that determines whether the use of a mark or a work by one party is likely to confuse with another party’s mark or work. The test is used to assess whether there is a case of trademark infringement or passing off, which are both forms of unfair competition that harm the goodwill and reputation of the trademark owners and the consumers. The test is also used to evaluate whether a mark is eligible for registration or protection, as it must be distinctive and not confusing with any existing marks.

The test is not a uniform or universal one but varies depending on the jurisdiction and the context. Different countries and regions have different laws and standards for applying the test, and different courts and authorities have different approaches and methods for analyzing the test. Therefore, a comparative analysis of the test can reveal the similarities and differences, as well as the strengths and weaknesses, of the various legal systems and practices.

One of the countries that has a unique and evolving legal framework for intellectual property protection is Uganda, which is a member of the East African Community and the African Regional Intellectual Property Organization (ARIPO)[1]. Uganda has enacted the Trademarks Act 2010, which provides for the registration and enforcement of trademarks, as well as the remedies for infringement and passing off. The Act also incorporates international and regional conventions and agreements on trademark protection, such as the Paris Convention, the TRIPS Agreement,

However, the application and interpretation of the Act and the likelihood of confusion tests are not always clear or consistent, and there are many challenges and gaps in the legal framework and practice of trademark protection in Uganda. Some of the issues and questions that arise include:

1.    How does the Trademarks Act 2010 define and apply the likelihood of confusion test for trademark infringement and passing off cases?

2.    How do the Ugandan courts compare and contrast the marks, the goods or services, and the other relevant factors in the likelihood of confusion analysis?

3.    How do the Ugandan courts deal with the challenges and complexities that arise in the likelihood of confusion cases, such as the use of foreign languages, the use of the internet and social media (online trading and marketing by individual companies), the use of composite or stylized marks, and the use of generic or descriptive terms?

4.    How do the Ugandan courts assess the impact of the likelihood of confusion on the consumers and the public, and what are the remedies and sanctions that are available for the trademark owners and the infringers?

5.    How do the Ugandan courts align their likelihood of confusion decisions with the international and regional conventions and agreements on trademark protection, such as the Paris Convention, the TRIPS Agreement,

6.    How do the Ugandan courts adapt and update their likelihood of confusion tests to reflect the changing market conditions and consumer behavior, and what are the implications and challenges for the future development of trademark law and practice in Uganda?

These are some of the questions that a comparative analysis of the likelihood of confusion test in intellectual property law in Uganda can set to answer, by examining and evaluating the legal principles and arguments, the case law and precedents, and the empirical and theoretical evidence that are relevant to the topic. Such an analysis can provide a deeper understanding of the evolving legal landscape surrounding trademark protection and unfair competition in Uganda, and can also offer some recommendations and suggestions for improving the likelihood of confusion test and the enforcement and registration of trademarks in Uganda.

INTRODUCTION.

Intellectual property law protects the rights of creators and owners of distinctive signs, such as trademarks, that identify the source and quality of goods or services. However, these rights are not absolute and may be challenged by others who use similar or identical signs that create a likelihood of confusion among consumers.

The likelihood of confusion test is a key element of trademark infringement, as it determines whether the use of one trademark causes consumers to mistake it for another previously established trademark[2]. Different jurisdictions have developed different standards and factors to assess the likelihood of confusion, which may lead to inconsistent and unpredictable outcomes.

This article aims to compare and contrast the likelihood of confusion test in three different legal systems: Uganda, the United States, and the European Union. It will examine the historical development, the legal framework, and the practical application of the test in each system, and highlight the similarities and differences among them. It will also analyze the strengths and weaknesses of each approach and suggest some possible improvements and harmonization.

The article will argue that the likelihood of confusion test is a complex and context-dependent inquiry that requires a balance between the interests of trademark owners, competitors, and consumers, and that there is no one-size-fits-all solution for all cases.

The National IP Laws in Uganda are[3] 

1.    The Industrial Property Act of 2014 and Industrial Property Regulations 2017. 

2.    The Trademarks Act 2010 and Trademarks Regulations 2012

3.    The Copyright and Neighboring Rights Act, 2016 and Copyright and Neighboring Rights Regulations, 2012

4.    The Geographical Indications Act 2013 

5.    The Trade Secrets Protection Act, 2009

Uganda is also party to;

1. Banjul protocol on marks

2. Harare Protocol on Patents, Utility models and Industrial designs.

3. TRIPS Agreement Currently under review is the National Intellectual property Policy.

Uganda however is not party to the Madrid protocol

MEANING OF LIKELIHOOD OF CONFUSION.

In Uganda, the Trademarks Act, 2010 does not define the term likelihood of confusion however a closer definition of this term is found in the Black’s Law Dictionary 6th Edn which defines likelihood of confusion as  “The touchstone of trademark infringement under the Lanham Trade-Mark Act is the "likelihood of confusion," or whether a substantial number of ordinarily prudent purchasers are likely to be misled or confused as to the source of different products.[4]” 

Comparatively in the United States of America, the test for likelihood of confusion is the Lapp test[5] , which is the standard, used to determine whether a likelihood of confusion exists between two trademarks. Under the Lanham Act[6], liability for trademark infringement is based on a finding that the use of one trademark causes a likelihood of confusion with another previously established trademark.

A likelihood of confusion exists when an allegedly infringing trademark is likely to cause an appreciable number of reasonably prudent purchasers to be confused as to the source or origin of the products or services it is used to identify.

The Lapp test is a multi-factored test used to establish the existence of a likelihood of confusion. The Lapp factors include: 

1.    The degree of similarity between the owner's mark and the alleged infringing mark; 

2.    The strength of the owner's mark; 

3.    The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; 

4.    The length of time the defendant has used the mark without evidence of actual confusion arising; 

5.    The intent of the defendant in adopting the mark; 

6.    The evidence of actual confusion; 

7.    Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; 

8.    The extent to which the targets of the parties' sales efforts are the same; 

9.    The relationship of the goods in the minds of consumers because of the similarity of function;

10.   Other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that he is likely to expand into that market.

Esteemed scholar Steven John Olsen in the article Mixed Signals in Trademark's "Likelihood of Confusion Law": Does Quality Matter?[7] Where he observes that, In the United States, the individual states were the first to develop trademark protection rights and continue to do so today[8] The First Restatement of Torts explains the early common law theories of trademark protection[9]. However, the federal government’s adoption of the Lanham Act in 1946, while not superseding the state regulations, was a pivotal step in trademark protection history[10]. The Lanham Act, as amended, allows a user to register the mark with the Patent and Trademark Office (“PTO”) at a small fee for federal trademark protection[11]. An individual or entity receiving federal trademark registration has an easier time proving the existence of a qualified trademark, but registration is not necessary to enjoy the Lanham Act’s protection[12]. Protection under the Act requires registration or actual use of a qualified mark in commerce[13]. Although the elements necessary to gain and maintain trademark protection are important aspects of trademark law, this Note focuses on the elements used by the judiciary in trademark infringement suits; specifically, the quality of an alleged infringer’s goods[14].

THE MEANING OF LIKELIHOOD OF CONFUSION IN THE UGANDAN CONTEXT.

The trademarks Act, 2010 under section 36 explains the rights and infringement of trademarks registered in Part A of the register. Part A of the register contains trademarks that are distinctive, meaning that they can distinguish the goods or services of one person from those of another. The section states that:

1. A person who registers a trademark in Part A has the exclusive right to use it for the goods that it covers, unless the registration is invalid or subject to some exceptions.

2. A person who uses a mark that is identical or similar to a registered trademark in Part A, without being the owner or a registered user, infringes the trademark if the use causes confusion or deception among consumers, or implies a connection with the owner or the goods that the trademark covers.

3. The right to use a trademark in Part A is limited by the conditions or restrictions that are entered on the register, and does not apply to the use of the mark in situations that are outside the scope of the registration.

It is worth noting that Section 2 (4) of the Trademarks 2010[15] is to the effect the register shall be divided into two parts called Part A and Part B respectively. Furthermore, these goods are classified under Regulation 12 of the Trademarks Regulations 2012[16], explains how goods and services are classified for the purpose of trademark registration in Uganda. The section states that:

1.    Goods and services are classified according to the Third Schedule of the Regulations, which contains 45 classes of goods and 11 classes of services.

2.    The classification is based on the International Classification of Goods and Services, also known as the Nice Classification, which is a system of classifying goods and services for the registration of marks under the Nice Agreement.

3.    The Regulations refer to the 9th edition of the Nice Classification, published by the World Intellectual Property Organization (WIPO) in 1992.If the Nice Classification is updated by WIPO in the future, the Minister, on the advice of the Registrar, will publish the changes in the Gazette and amend the Third Schedule accordingly.

4.    If there is any doubt about which class a certain good or service belongs to, the Registrar will decide the matter.

HOW HAVE COURTS IN UGANDA RELAYED AND APPLIED THE PRINCIPLE OF LIKELIHOOD OF CONFUSION TEST FOR TRADEMARK INFRINGEMENT AND PASSING OFF CASES?

The principle of likelihood of confusion test is a key element of trademark infringement and passing off cases in Uganda. It means that the use of one trademark causes consumers to mistake it for another previously established trademark.

The courts in Uganda have applied this principle by looking at the marks and comparing them to see if they are identical or similar, and if they are likely to deceive or cause confusion in the minds of an average consumer.

The courts have also considered other factors, such as the similarity of the goods or services, the distinctiveness of the marks, the reputation of the marks, the intention of the infringers, and the actual confusion among consumers. Some of the cases where the courts have applied this principle are

1.Nice House of Plastics v Hamidu Lubega[17]

 This case was about a trademark infringement and passing off claim by Nice House of Plastics Ltd, the plaintiff, against Hamidu Lubega, the defendant. The plaintiff alleged that the defendant imported and intended to sell tooth brushes bearing its registered trademarks ‘NICE’ and ‘NICE TOOTH BRUSH’.

Court observed

As to whether the defendant’s importation of the 25 cartons, the subject matter of this suit, amounts to an infringement of the plaintiff’s trademarks,

A trademark infringement plaintiff must show a valid, protectable trademark in which he has rights prior to those of the defendant. The plaintiff herein has through the evidence of PW1 and PW2 shown that the trademarks which are the subject of this suit have not been the subject of any assignment, registered user or third party rights.

The test of infringement is likelihood of confusion.

Likelihood of confusion is the probability that a reasonable consumer in the relevant market will be confused or deceived, and will believe that the impugned goods or services come from, or the sponsored or endorsed by the protected user or that the two users are affiliated. Infringement is thus analogous to the tort of fraud.

 Court further held that“….In my view, a trade mark owner who successfully shows likelihood of confusion is entitled to both injunctive relief and money damages from the infringer. In view of my findings above, the plaintiff is entitled to the above three reliefs. I grant them. The infringing tooth brushes and product get-up in which the defendant’s toothbrushes are packed shall be delivered up to the plaintiff for destruction under the supervision of officials of Uganda Revenue Authority (URA) and Uganda National Bureau of Standards (UNBS)…”

Whereas in regards to passing off

Court held as follows;

“…As to whether or not the plaintiff has made out a case of passing off, Court is of the view that a cause of action for passing off is a form of intellectual property enforcement against the unauthorized use of a mark which is considered to be similar to another party’s registered or unregistered trade marks, particularly where the action for trademark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trade mark and the unregistered mark). It is a common law tort which can be used to enforce unregistered trade marks.

The instant case is for enforcement of registered trade marks. Furthermore, going by the authorities, five characteristics which must be present in order to create a valid cause of action for passing off are:

(1) a misrepresentation;

(2) made by a trader in the course of trade,

(3) to prospective customers of his or ultimate consumers of goods or services supplied by him;

(4) which is calculated to injure the business or good will of the trader (in the sense that it is a reasonably foreseeable consequence), and

(5) which causes actual damage to a business or good will of the trader by whom the action is brought or will probably do so.

See: (1) Spalding (AG) & Bros –Vs- AW Gamage Ltd & Anor (1915)32 RPC 273, HL (2) Reckitt & Coleman Ltd –Vs- Borden Inc. [1990] 1 WLR 491.

In conclusion, court held that

“…while the intention of the defendant may indeed have been to pass off his goods as those of the plaintiff, the incomplete nature of the attempt leads the Court to the view that a case of passing off has not been sufficiently made out….”

THE SECOND DECISION IS VISION IMPEX LIMITED V SANSA & ANOR[18]

The facts briefly are, The plaintiff, a Limited Liability Company and the registered owner of the ABC "Feathers" Sanitary Pads trademark, filed a lawsuit against the defendants for infringing and passing off their trademark.

The plaintiff, being the exclusive distributor of the sanitary pads, asserted that the defendants imported a consignment of similar pads, intending to mislead the public and cause potential damage.

The defendants' consignment was seized by authorities on suspicion of counterfeiting and unauthorized use of standards. The plaintiff sought various remedies, including a permanent injunction, impounding and destruction of the infringing goods, damages, an account of profits, and costs. Interlocutory judgment was entered against the defendants for non-appearance, and formal proof proceeded with a witness confirming the similarity between the plaintiff's and defendants' products.

The plaintiff argued that the public could not differentiate between the products, leading to a decline in sales and damages to the brand. The plaintiff requested judgment in their favor and all sought remedies. The key issues for determination included the plaintiff's right to exclusive use of the trademark, whether the defendants' actions constituted infringement, and the available remedies for both parties.

Court held that,

Under Section 36(2) of the Trade Marks Act, infringement occurs when a person, not the owner or a registered user, uses a mark identical or closely resembling a registered trademark, likely to cause confusion in the course of trade. Decided cases, such as Angelo Fabrics (Bolton) Ltd vs. Africa Queen Ltd and Standard Signs (U) Ltd vs. Standard Signs Ltd, establish that the test for infringement is the likelihood of confusion among reasonable customers. In the current case, the marks on the defendant's goods closely resemble those of the plaintiff, causing potential confusion in terms of color, design, sound, and belonging to the same class of goods (sanitary pads). Despite minor differences, the goods are visually and conceptually similar, leading to the likelihood of confusion. The defendants, who did not defend the suit, are deemed guilty of trademark infringement. The consignees named in the importation documents are considered owners of the goods under established legal principles.

Court thus held that,

The goods imported by the defendants were deceptively similar to the plaintiff's, posing a likelihood of confusion among reasonable users of sanitary pads. The defendants, who did not defend the suit, were deemed guilty of trademark infringement. Sansa Ambrose and Goldman Logistics Import and Export, named as consignees in importation documents, are considered owners of the 2049 cartons of "Featlhers" sanitary pads under legal principles.

The plaintiff argued that the use of the similar mark by the defendants, without consent, could cause confusion, mistake, or deception in commerce. The evidence presented by the plaintiff indicated a risk that the public might associate the defendants' goods with the plaintiff or an economically linked undertaking.

The court held that the likelihood of confusion was high, as the goods are so similar that a customer might assume the products are associated with each other.

In light of these factors, the court concluded that the importation and selling of "Featlhers" sanitary pads by the defendants constitutes an infringement of the plaintiff's trademark "Feathers."

“It is an infringement for any person, without the consent of the registered owner of the trade mark, to use in commerce any reproduction, counterfeit, copy or colorable limitation of a registered trade mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with, which such use is likely to cause confusion, or to cause mistake, or to deceive…”

The Plaintiff established in its evidence that there was a risk that the public might believe that the Defendants goods came from the Plaintiff or an economically linked undertaking. This is because 

“a trade mark is a badge of origin or source. The function of a trade mark is to distinguish goods having the business source from goods having a different business source. It must be “distinctive” that is to say, it must be recognizable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered good will”. – Refer to Scandecar Developments AB vs. Scandecar Marketing AB [2001] UK HL 2L.

THE 3RD CASE ANGLO FABRICS (BOLTON) LTD & ANOR Versus AFRICAN QUEEN LTD & ANOR[19]

The facts briefly are, the 1st plaintiff, a UK-based limited liability company, and the 2nd plaintiff Ahmed Zziwa, a sole registered user in Uganda, are pursuing a claim against the 1st defendant, a Ugandan company, and the 2nd defendant, its Managing Director. The claim alleged infringement of the 1st plaintiff's trademark and passing off of the defendants' goods as those of the plaintiff, specifically medicated soap bearing the registered trademark 'Mekako.' The parties agreed during a scheduling conference on key points, including the trademark registration and renewal, the sole registered user in Uganda, importation of a soap product known as Mekako by the defendants, and the presence of mercury in the plaintiffs' Mekako soap. The identified issues for determination included the validity of the 1st plaintiff's claim, compliance with UNBS standards, the alleged ban of the plaintiffs' product in Uganda, trademark infringement, the international registration of the word "Mekako," the soap's status under an international trademark, and the entitlement of the plaintiffs to the claimed reliefs against the defendants.

Court held as follows

 “….In cases where trademark infringement is alleged, as herein, the infringement occurs when a suspected infringer uses a mark for goods or services identical or closely related to those of the plaintiff.    The test of infringement is likelihood of confusion.  “

“…Likelihood of confusion is the probability that a reasonable consumer in the relevant market will be confused or deceived, and will believe the infringer’s goods or services come from, or are sponsored or endorsed by, the complainant or that the two are affiliated...”

The court further held that…

“…I said in Nanoomal Issardas Motiwalla (U) Ltd –Vs- Sophie Nantongo & Others HCT00-CC-CS-0430-2006 (unreported) and I reiterate that position herein, that infringement is analogous to the tort of fraud.    The duty of the Judge in a case such as this is to decide, upon seeing the goods, whether the plaintiffs goods nearly resemble the ones complained of as to be likely to deceive or cause confusion in the minds of the public.   

Having found that the products in the instant case are identical in every possible way; and in view of the admitted fact that the defendants have imported into the country a soap product known as Mekako; and in view of the unchallenged evidence that the importation was done without knowledge and/or authority of the plaintiffs, I have found no difficulty in determining the fourth issue in the affirmative.    I do so”. 

In regards to Passing off

The court held as follows;

“This is a case grounded in infringement of a trademark and passing off.    Going by authorities, 5 characteristics which must be present in order to create a valid cause of action for passing off are:

(i)  a misrepresentation;

(ii)  made by a trader in the course of trade;

(iii) to prospective customers of his or ultimate consumers of goods or services supplied by him;

(iv)  which is calculated to injure the business or good will of the trader (in the sense that it is a reasonably foreseeable consequence);

(v)  which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.    See:    Reckitt & Coleman Ltd –Vs- Borden Inc. [1990] 1 WLR 491.

The plaintiffs have demonstrated a misrepresentation by the defendants, to the public, in the sense that their (the defendants) product has also been on the market selling along side that of the 2nd plaintiff, PW1

THE 4TH CASE IS STANDARD SIGNS UGANDA LTD V FRED LEO OGWANG T/A SHANDARD & ANOR[20]

The facts briefly are, The plaintiff, a limited liability company, brought a lawsuit against the defendants for trademark infringement and passing off of its business name. The defendants denied the allegations, stating that the 1st defendant registered and traded under the name "Shandard Signs" and later incorporated "Shandard Signs (Uganda) Limited." The case had a history of delays and changes in legal representation.

The origin of the dispute dates back to 1997 when the plaintiff operated as "Standard Signs Uganda" before formally registering the business name and incorporating a limited liability company in 2003. The plaintiff also registered a trademark in 2005.

The 1st defendant, operating as "Shandard Signs" since 2002, incorporated a company in 2003. The parties agreed on issues, including infringement of the plaintiff's business name and trademark, passing off, and sought remedies. The court, considering the evidence and lack of defense, was tasked with determining the validity of the plaintiff's claims and deciding on available remedies.

Court held that,

Since first issue in the case revolves around the similarity between the plaintiff's business name "Standard Signs" and the 2nd defendant's name "Shandard Signs." The primary difference lies in the second letter of the first word, with the plaintiff's using "t" and the 2nd defendant's using "h." Despite this single difference, the rest of the words are identical, creating a close resemblance that could lead to confusion. The pronunciation and the expert's observation highlight the potential for confusion.

Drawing on the precedent of Parke Davis & Company Limited v Opa Pharmacy Limited [1961] EA 556, where the use of identical first two syllables and resemblances in containers indicated a real probability of confusion, the court finds merit in the plaintiff's claim. The expert's observation about the potential confusion in audio adds weight to this conclusion.

Addressing the issue of name registration, the plaintiff's Managing Director provided a compelling explanation for choosing "Standard," emphasizing the quest for high-quality products. In contrast, the 1st defendant's explanation for "Shand" lacked convincing details, and the lack of proof for his brother Leonard's name raised doubts.

Reviewing the evidence of the business name registration, the plaintiff's Managing Director initiated business operations in 1997 and registered the name in 2003, supported by relevant certificates. The 1st defendant's timeline and name registration, beginning in 2002, raised concerns about the irregularity of the registration process.

Considering these factors, the court concludes that the plaintiff's registration of "Standard Signs" predates the 1st defendant's registration of "Shandard Signs," and the latter's registration was irregular. The continued use of "Shandard Signs" and the subsequent incorporation as "Shandard Signs (Uganda) Limited" infringe on the plaintiff's name. Therefore, the court affirms the first issue in favor of the plaintiff.

In regards to Passing off

The court reiterated the decision of Reckit & Colman Products v Borden [1990] All E.R. 873 which stated the three issues to be determined in cases of passing off namely that:

1. The party alleging passing off must prove whether the defendant’s business had acquired good will in the area;

2. Whether the defendant impliedly or expressly misrepresented his goods as those of the plaintiff; and

3.  Whether any damage arose from this misrepresentation.

5TH CASE IS NAIROBI JAVA HOUSE LTD V MANDELA AUTO SPARES LTD[21]

The facts briefly are, this was an appeal by Nairobi Java House Ltd (the appellant), a Kenyan company operating under the trademark JAVA HOUSE. The appeal was challenging the decision of the Registrar of Trademarks in a trademark opposition brought by Mandela Auto Spares Parts Ltd against the registration of 'JAVA HOUSE AND JAVA SUN' and 'NAIROBI JAVA HOUSE' by Nairobi Java House Ltd. The High Court of Uganda had set aside the Registrar's decision.

The appellant argued that the Registrar made substantial errors in evaluating the trademark case, including inadequate comparison of trademarks, incorrect categorization as word marks, and failure to recognize the descriptiveness of the term "Java." They contended that the Registrar considered irrelevant matters and inadmissible evidence, leading to an erroneous conclusion regarding the likelihood of confusion.

In response, the respondent opposed the appeal, emphasizing that the Assistant Registrar had already upheld their objection to the appellant's trademark registration. The appellant had appealed on nine grounds, attempting to amend them later, which was disallowed. The appellant subsequently abandoned the initial grounds, raising concerns about the introduction of new grounds. The respondent's counsel argued that the newly submitted grounds deviate from the specified grounds in the notice of motion, focusing on matters like the meaning of "Java," the source of service origin, the reasonable consumer, judicious exercise of discretion, concurrent usage, and trade competition.

Court’s determination on the matter of Likelihood of Confusion

The court held

In Specsavers International Healthcare Ltd versus Asda Stores Ltd [2012] EWCA Civ at paragraph 51 and 52, the Court of Appeal of England and Wales observed that the general approach to be adopted in assessing the requirement of likelihood of confusion is that the likelihood of confusion must be appreciated globally, taking account of 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 presumably circumspect and observant. In the premises the Appellant’s Counsel contends that the average consumer is not about nationality but a legal construct. It follows that the average consumer in Uganda being not as well informed is irrelevant to the formulation of who the average consumer is. Where the average consumer has a low-level of literacy, greater emphasis should be put on the visual and aural differentiation between the sings in question rather than the word "Java".

The court further held that,

The Registrar of Trademarks committed a distinct and material error of evaluation and principle in finding that a likelihood of confusion would exist as to the source of origin of the services provided by the Appellant and Respondent.

The Registrar of Trademarks committed a distinct and material error of evaluation and principle in formulating a narrow construction of the reasonable consumer test, and resultantly arrived at the erroneous conclusion that a likelihood of confusion exists

In a detailed judgement on Page 44, the court observed that the priority of trademarks registered in different member states of the East African Community, specifically focusing on marks registered in Kenya and sought to be registered in Uganda. The international legal framework, including the Paris Convention for the Protection of Industrial Property, is explored.

Under the Paris Convention, trademarks registered in one country are considered independent of registrations in other countries, and protection is provided for marks registered in a member state within the union. The length of time a mark has been in use is deemed relevant in this context. The appellant, seeking registration in Uganda, presented certificates proving prior registration in Kenya.

The Ugandan Trademarks Act of 2010 incorporates principles from the Paris Convention, with sections 44 and 45 addressing the refusal of trademarks based on resemblances to foreign registered marks. The Act emphasizes that the mark registered first in time takes priority, and the court has jurisdiction to remove a trademark registered later that resembles a foreign-registered mark.

Considering the East African Community's principles of complementarity and free movement of goods and services, the court noted that the decision of the Registrar, which restricts the registration of a trademark registered earlier in Kenya, hinders the free movement of services within the East African Community. The court asserted that Sections 44 and 45 of the Trademarks Act 2010 support freedom of movement of goods and services within the East African Community within certain limitations.

Justice Madrama critically examined the Registrar's ruling, and it was found that there is no visual resemblance between the Appellant's trademark ("Nairobi Java House Coffee & Tea") and the Respondent's mark ("Cafe Javas"). The Registrar acknowledged this lack of visual similarity. While there were some conceptual similarities due to the dominant element "Java," the Registrar erred in not recognizing that "Java" is a descriptive term and should have been disclaimed by the appellant.

The Registrar's conclusion on the likelihood of confusion was deemed faulty. The court observed that no survey was conducted, and the opinions of two individuals were considered insufficient to establish confusion among the public. The Registrar relied on the evidence of Mohammad Mohideen, but it was noted that there was no representation of the average consumer or evidence regarding the Respondent's clientele.

Additionally, court emphasized that the trademarks are visually distinct and that the appellant has been using the mark in Kenya since 1999, and the lack of evidence supporting confusion led to the conclusion that the two marks are dissimilar.

As a result, the grounds raised in the Notice of Motion (grounds 1, 5, 6, 7, and 8) were allowed, and the Appellant's appeal succeeded with costs. The Registrar's decision was set aside, and a consequential order was issued compelling the registrar to allow the registration of the Appellant's application, subject to conditions of disclaimer under section 26 of the Trademarks Act 2010[22]

I quote the decision as follows;

What needs to be considered before considering likelihood of confusion or similarity of the opponent’s marks is which mark takes priority? It is a matter of public interest for the East African Community to consider what to do with marks registered prior in another member state and sought to be registered in yet a different member state of the Community.

The evidence on record proves that the Applicant’s Trademark is a foreign registered trademark having been registered in Kenya and the owner thereof who is the Appellant sought to register its mark in Uganda as well. The international legal framework is inter alia that of the Paris Convention for the Protection of Industrial Property 1883 to which Uganda and Kenya are parties and secondly the provisions of the Ugandan Law on the matter if any.

I will start with the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on September 28, 1979, which deals with registration of foreign marks under article 6 thereof.

Article 6 on the Conditions of Registration; Independence of Protection of Same Mark in Different Countries provides as follows:

“(1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.

(2) However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on the ground that filing, registration, or renewal, has not been effected in the country of origin.

(3) 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.

The article provides that the conditions for filing and registration of trademarks are determined by the domestic trademark legislation.

Secondly, a mark registered in one country of the union is independent of the registration in other countries under the principle of territoriality. Secondly article 6 quinquies[23] provides for the protection of marks registered in one country of the Union in the other Countries of the Union and the question is what protection does the Kenyan registered mark of the Appellant have in Uganda? Article 6 quinquies[24] provides inter alia in paragraph A (1), (2) and paragraph B that countries of the Union which as I held above include Kenya and Uganda shall accept trademarks registered in a country of the Union for filing.

Secondly a country of the Union may require the Applicant of a foreign registered trademark to produce a certificate of registration of the trademark in the country of origin. Thirdly it is provided that the trademark may neither be denied registration nor invalidated except inter alia when they infringe rights acquired by third parties where protection is claimed. Secondly when they are devoid of any distinctive character or are contrary to morality or public order among other grounds. Furthermore paragraph C in determining whether a trademark is eligible for protection provides the criteria for consideration is as follows:

“(1) In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use.

(2) No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and do not affect its identity in the form in which it has been registered in the said country of origin.”

Among other factors the length of time a mark has been in use is a relevant fact. The length of time is a relevant factor in this appeal.

Whereas the Paris Convention for the Protection of Industrial Property gives discretionary powers to a member of the union through its trademark registration office to require production by the Applicant of a certificate of registration in the foreign country, in the proceedings before the tribunal the Group Chief Executive Officer of the Appellant Mr. Rick Ashley produced two certificates of registration in support of the Appellant’s counterstatement to the objection and by statutory declaration. 

The attached certificate of the Applicant/Appellant to the statutory declarations proves that the Appellant was registered in Kenya in respect of the Trademark “Nairobi Java House Coffee & Tea” on the 4th of December 2000 in class 30 (Schedule III) Under Number 50133 as of the 8th of May 2000, in respect of Coffee, tea, foodstuffs and bakery products etc. It is again registered in class 11 under trademark number 63904 for apparatus for lighting, heating, steam generating, cooking, drying, ventilating and others on the 5th of February 2009 with the effective date of registration being 20th August 2008.

The Ugandan Trademarks Act 2010 has domesticated some of the principles of the Paris Convention for the Protection of Industrial Property under sections 44 and 45 thereof.  Section 44 (1) gives the registrar power to refuse a trademark where it resembles or is identical with a foreign registered trademark registered prior in time. Section 44 (2) gives the Registrar discretionary powers to refuse to register a foreign registered trademark on the ground that the mark is identical with or nearly resembles a trademark which is already registered in respect of the same services, the same description of services; or goods or a description of goods or services which are associated with those services or services with that description in a country or place from which the services originate. However section 44 (3) provides that the Registrar shall not refuse the application for registration in Uganda if the Applicant proves prior use continuously of the mark before the registration of the foreign trademark in the country of origin. The general principle that emerges from sections 44 and 45 of the Trademarks Act 2010 of Uganda is that the mark registered first in time takes priority to a later trademark in case of resemblances.

Section 45 further gives the court jurisdiction to remove from the register a trademark which is registered after a foreign registered mark in case the trademark registered in Uganda is identical with or nearly resembles a trademark of the plaintiff registered in a foreign country in respect of the same services etc and registered prior in time.

Last but not least I have considered the fact that Kenya and Uganda are part of the East African Community and operate under the principle of complementarities under articles 7 of the Treaty. The community law is that Member States which include Kenya and Uganda shall enact similar laws with regard to the removal of non tariff and other technical barriers to trade and measures that restrict free movement of goods and services. Sections 44 and 45 of the Trademarks Act 2010 support freedom of movement of goods and services in the East African Community within the limitations contained in the sections.

In the Treaty for the Establishment of the East African Community (As amended on 14th December, 2006 and 20th August, 2007) article 7 provides that there shall be free movement of goods and persons, labour, services, capital information and technology. It provides in article 7 (1) (c):

“ARTICLE 7

Operational Principles of the Community

1. The principles that shall govern the practical achievement of the objectives of the Community shall include:

(c) the establishment of an export oriented economy for the Partner States in which there shall be free movement of goods, persons, labour, services, capital, information and technology;

          (g) the principle of complementarity; and…”

The decision of the Registrar stifles free movement of services within the East African Community by restriction on the registration of a trademark registered prior in time in Kenya on the ground of registration of a trademark albeit registered later in time to Uganda.

Court further held

The Appellants mark which was registered in Nairobi in the year 2000 has remained the same. It has the words “Nairobi Java House Coffee & Tea”. In more specific description the word NAIROBI is written inside and on top of a rectangular box. It is immediately followed by the devise of a sun depicted as a human face in the centre and below the word Nairobi. Thirdly this sun is followed below it by the word JAVA. After the word Java there is a dash sign below that resembles the sign “-:-“. Thereafter there is yet below the words “Coffee & Tea”. The Registrar also added the colours. The colour of the sun is in red. The words coffee and tea are also in red in a yellow background.  In the variation the Appellants trademark does not have the word Nairobi on top but has the words JAVA HOUSE coffee & Tea.

The Respondents mark on the other hand has the words “Cafe’ Javas” with the devise of a steaming cup above the letters “as” in “Javas”.  The word “Cafe” is in black while the word “Javas” is in orange. The Registrar, and correctly in my view concluded that there was no visual similarity between the two marks namely that of the Appellant and that of the Respondent. His words are: “Visually the marks do not resemble”.

First of all from my holding that the word Java is an ordinarily word, that it is a geographical place in Indonesia, that it refers to coffee and computer programming language and that this word is associated with the business of trademarks, like the word “Cafe’” it can be used as a descriptive term to refer to such business in class 43 where coffee is served. On the basis of that holding, the registrar erred in law not to find that the word Java is a descriptive term as held above and properly disclaimed by the appellant.

As far as likelihood of confusion is concerned there was no survey which had been conducted. The opinion of two deponents was insufficient to reach the conclusion that the registrar reached of confusion of members of the public. Mohideen relied on the opinion of one customer Mr. Senyondwa whose affidavit he attached. Secondly he relied on a newspaper article written by one Rita. There is no evidence that Rita interviewed anybody and her comments were her own opinion. The concept of an average consumer must import representativeness of the opinion or likelihood of confusion. There is no evidence of the kind of clientele the Respondent has and who is a reasonable customer.  The registrar erred to rely on the evidence of Mohammad Mohideen after finding that there was no evidence of reference to the restaurants of the respondent as Javas by an average or reasonable customer.

Furthermore the trademarks of parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported.

In the premises grounds 1, 5, 6, 7 and 8 of the Notice of motion are allowed. The two marks are capable of concurrent usage and the Appellant’s appeal succeeds with costs. 

The decision of the Registrar dated 21st May 2015 is set aside.

A consequential order issue compelling the registrar to allow registration of the Appellants application No. 48062/2013 and Trademark Application No. 48063/2013 subject to conditions of disclaimer under section 26 of the Trademarks Act 2010.

THE LAST CASE IS THE RECENT CASE OF A-PLUS FUNERAL MANAGEMENT LTD V A-CLASS FUNERAL SERVICES (U) LTD AND URSB[25] 

The facts briefly are, A-Plus Funeral Management Ltd (the plaintiff), a funeral services company in Uganda, filed a case against A-Class Funeral Services (U) Ltd (the 1st defendant), a similar company, and the Uganda Registration Services Bureau (URSB).

The plaintiff sought declaratory orders claiming that the 1st defendant's name constituted a pass-off of its business name due to alleged wrongful and negligent registration by the URSB.

The plaintiff, in operation since 2003, argued it had significant goodwill in its name. The 1st defendant defended its legal registration and denied any intention to pass off the plaintiff's name.

The URSB, responsible for registration, contended that the registration followed legal requirements. The case revolves around issues of infringement, passing off, liability of the 1st defendant, cause of action against the 2nd defendant (URSB), negligence in registration, and potential remedies.

COURT HELD IN REGARDS TO LIKELIHOOD OF CONFUSION AS FOLLOWS

Justice Musa Ssekaana referred to Sections 36 and 37 of the Companies Act 2012, emphasizing the registrar's role in preventing undesirable or misleading names during registration. Notably, the court underscored that the registration process is not based on phonetic similarity but rather on the potential for names to mislead the public.

He held as follows;

The two company names as registered are not in my view similar with the exception of only letter “A” and word “Funeral”. A-Class Funeral Services (U) Ltd and A-Plus Funeral Management Ltd. The plaintiff tried to make objections as to the registration of the 1st defendant but the 2nd defendant rejected the complaint since in their opinion the names are not similar or likely to confuse or mislead as contended by the plaintiff.

Justice Ssekaana highlighted the significance of guarding against double registration, citing the Pentecostal Assemblies of God case, which emphasized the potential for confusion among the public due to identical names. The plaintiff argued that the phonetic similarity between the names would confuse the funeral service industry's customers. However, the court disagreed, asserting that customers in this industry are generally attentive and discerning.

He held as follows, 

“This court does not agree that the similar phonetic sound is likely to cause confusion to the public in the funeral service industry. The customer in the nature of business is generally attentive, discerning, well-informed, reasonably observant and circumspect.

 Such a user is less likely to be confused as to particulars of a funeral service provider than an ordinary mourner or bereaved customer or someone procuring services on behalf of a bereaved client.

The issue of confusion of marks, names at issue must not be considered from the point of view of the average hurried or confused consumer having an imperfect recollection of the opponent’s mark or name who might encounter the name of the plaintiff. That does not mean a rash, careless or unobservant purchaser(customer) on one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived. The standard is not that of people “who never notice anything” but of persons who take more than “ordinary care to observe that which is staring them in the face”. See Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 page 803-811

COURT’S DECISION IN REGARDS TO PASSING OFF.

The court clarified that passing off is a tort rooted in common law, preventing goods or businesses from being misrepresented as those of another. Justice Ssekaana stressed the importance of proving a false misrepresentation and concluded that the two companies' names, A-Plus Funeral Management Ltd and A-Class Funeral Services (U) Ltd, were distinct and unlikely to cause confusion among reasonable customers.

He held as follows,

“The basis of the cause action lies squarely in misrepresentation, for its underlying rationale is to prevent commercial dishonesty. The tort of passing off protects the business of the plaintiff with its many facets: its assets, goodwill and reputation. It stops persons gaining a commercial advantage through wrongfully taking the attributes of another’s business if it causes or likely to cause that other person’s business some damage. See ConAgra Inc v McCain (Aust) Pty Ltd (1992) 23 IPR 193 at 231”

No man is entitled to represent his goods as being the goods of another, and no man is permitted to use any mark, sign or symbol, device, or other means whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such a purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.

The basis of a passing off action being a false misrepresentation by the defendant, it must be proved in each case as a fact that the false representation was made. In this case, there two companies duly incorporated under the laws of Uganda-Companies Act 2012. As found earlier the names in court’s view are not similar and do not cause any confusion to any reasonable mourner or customer who may be observant. No prospective customer in the funeral industry would mistake A-Plus Funeral Management Ltd for A-Class Funeral Services Ltd.

The two trade names of the plaintiff and 1st defendant as shown earlier are distinct and the plaintiff’s submission that they similar phonetic sound has been found baseless. It is very true that the reputation and goodwill of the business which often attached to the trade name will be protected by courts. Equity would intervene to provide relief to a plaintiff whose customers had been misled by his competitors.

The court dismissed the plaintiff's claim, ruling that the 1st defendant's name did not constitute passing off.

5.     HOW DO THE UGANDAN COURTS DEAL WITH THE CHALLENGES AND COMPLEXITIES THAT ARISE IN THE LIKELIHOOD OF CONFUSION CASES, SUCH AS THE USE OF FOREIGN LANGUAGES, THE USE OF THE INTERNET AND SOCIAL MEDIA, THE USE OF COMPOSITE OR STYLIZED MARKS, AND THE USE OF GENERIC OR DESCRIPTIVE TERMS?

As observed in the decisions above, the likelihood of confusion test is a key element of trademark infringement and passing off cases in Uganda. It means that the use of one trademark causes consumers to mistake it for another previously established trademark.

The courts in Uganda deal with the challenges and complexities that arise in the likelihood of confusion cases by looking at various factors, such as:

1.    Similarity of the marks: The courts compare the marks in terms of appearance, sound, meaning, and overall impression As seen in the case of Nairobi Java House Ltd v Mandela Auto Spares Ltd[26] court held that on the issue of similarity of marks or likelihood of confusion,

The court found that there was no survey which had been conducted and that the opinion of the two deponents was insufficient to reach the conclusion that the Registrar reached of confusion of members of the public. The evidence relied upon by Mandela Auto was the opinion of one customer and a newspaper article written by one Rita. According to the court, there was not evidence that Rita interviewed anybody and her comments were her own opinion.

The learned judge stated that:

“…the trademarks of the parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant [Nairobi Java] has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported” 

A word is not an invented word where it sounds phonetically equivalent to an unregistrable word. The principle is that a word cannot be registered if it is the phonetic equivalent of an unregistrable word;

2.    Similarity of the goods or services: The courts consider the nature, quality, purpose, and target market of the goods or services.

The court observed in the same case of Nairobi Java House (Supra) that Section 9 (1) of the Trademarks Act 2010 makes it essential that the trademark shall contain one of the essential characteristics.

In relation to the Respondent which is a limited liability company the name of the company or the signature of the Applicant or and invented word or words.

The first three considerations do not apply to the Respondent. The trademark “Cafe’ Javas” does not have the company name of the Respondent which is Mandela Auto Spares Ltd.

Secondly it does not have the signature of the Applicant.

Thirdly it does not have an invented word or words unless we accept that the word “Javas” is not “Java”. 

I will therefore consider the other parts of section 9 (1) namely (d) and (e). As far as item (d) is considered the trademark may consist of a word or words having no direct reference to the character or quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname. 

In other words the words “Café Javas” had to have no direct reference to the character or quality of goods or services in respect of which it is registered.

Secondly it should not be a geographical name or surname. The word Java is a place in Indonesia and is a geographical name referring to an Island. 

Secondly from the Registrars ruling it is also means coffee. The word Café means coffee.

I have checked the evidence and dictionary meanings relied on. Among the evidence considered is that “Java Coffee” refers to coffee beans produced in the Indonesian Island of Java. Several of the Café Java or Java Café hits on the internet search relied on by the Appellant and referred to by the Registrar of Trademarks refer to restaurants in the USA, Australia and UK among others and where among other things coffee is served. I have also considered the conclusion of the Registrar.

Similarly, in Wagamama Ltd v. City Centre Restaurants PLC[27], Lindley J held on the functions of Trade marks, that they have historically been used to protect the trade with which they are associated. in SA CNLSUCAL NV v HAG GF AG[28].He said:

"Like patents, trademarks find their justification in a harmonious dove-tailing between public and private interests. Whereas patents reward the creativity of the inventor and thus stimulate scientific progress, trademarks reward the manufacturer who consistently produces high-quality goods and they thus stimulate economic progress. Without trade mark protection there would be little incentive for manufacturers to develop new products or to maintain the quality of existing ones.

Lastly in The Eastman Photographic Materials Company, Limited Appellants; v The Comptroller-General[29].

The House of Lords observed The Comptroller-General of Patents, Designs, and Trade Marks, having refused to register “Solio” as a trade-mark in respect of photographic paper, because that the mark proposed did not consist of any of the essential particulars required as a condition of the registration of a new trade-mark, the appellants appealed to the Board of Trade, who referred the appeal to the Court. Kekewich J. held that the application had been rightly refused, and his judgment was upheld by the Court of Appeal, The ground upon which the Courts proceeded was that the word “Solio” had reference to the character or quality of the goods, and was therefore incapable of registration. Those learned judges being of opinion that “Solio” suggested “Sol,” the sun, and therefore had “reference to the character or quality of the goods”

Issues; Whether an “invented word” cannot be registered as a trade-mark if it “has any reference to the character or quality of the good

The court held that

A word which is “an invented word” within the meaning of clause (d), may be registered as a trade-mark, although it “has reference to the character or quality of the goods” within clause (e). Clauses (d) and (e) are independent of each other. 

The word “Solio” held to be capable of registration as a trade-mark under class 39 in respect of photographic paper, and the decision of the Court of Appeal reversed.

Lord Herschell; 

There seems to me to be the broadest distinction between the two cases. Under (e) any word in the English language may serve as a trade-mark—the commonest word in the language might be employed. In these circumstances it would obviously have been out of the question to permit a person by registering a trade-mark in respect of a particular class of goods to obtain a monopoly of the use of a word having reference to the character or quality of those goods. The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent the other members of the community from using for purposes of description a word which has reference to the character or quality of goods.

But If a man has really invented a word to serve as his trademark, what harm is done, what wrong is inflicted, if others be prevented from employing it, and its use is limited in relation to any class or classes of goods to the inventor? 

An invented word is allowed to be registered as a trade-mark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases. 

It may no doubt sometimes be difficult to determine whether a word is an invented word or not. I do not think that the combination of two English words is an invented word, even though the combination may not have been in use before, nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eye or ear the same idea would be conveyed as by the word in its ordinary form."

To constitute an invented word, within the meaning of the section, it must be a word coined for the first time. “Such a word, “is of necessity incapable of having reference to the character or quality of goods, because, ex hypothesis, it is an entirely new unknown word incapable of conveying anything.” 

However, An invented word has of itself no meaning until one has been attached to it.

Lord Macnaghten observed that; an invented word, if it is “new and freshly coined” (to adapt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think that it is necessary that it should be wholly meaningless

3.    Distinctiveness of the marks: The courts assess the originality, uniqueness, and recognition of the marks in the market.

The law under Section 4(2) of the Trademarks Act 2010 observes that Where a sign is not inherently capable of distinguishing the relevant goods or services, qualification for registration shall depend on distinctiveness acquired through use.

Furthermore, Section 6 of the same Act is to the effect that, a person planning to register a trademark can seek preliminary advice from the registrar on whether the proposed trademark is inherently distinctive or capable of distinguishing the goods or services of the intended business from others. The registrar will provide advice based on this assessment. The individual seeking advice must make the application in the prescribed manner.

Case in point is STANDARD CAMERAS LD.'S APPLICATION TO REGISTER A TRADE MARK[30] MR. JUSTICE LLOYD-JACOB S.C. Ld. applied to register a trade mark consisting of the name "Robin Hood", written in a manner which included a device of an archer and a target.

Evidence of distinctiveness was not tendered.

The application was refused on the ground that "Hood" and "Robin" were common English names, that goods sold under the mark would become known as "Robin Hood" goods, and that the mark was not a name represented in a special or particular manner, the archer and target being merely added matter illustrative of the words. S.C. Ld. appealed to the Court, and contended upon the appeal that the mark was registrable both as a name represented in a special or particular manner, and as a distinctive composite device. It was contended by the Registrar that any peculiarity lay solely in matter added to the name as distinct from the manner in which the name itself was represented, and that the added matter (being merely illustrative of the name) could not render it distinctive.

In addition, the definition of a trademark by Lord Nicholls in Scandecor Development AB versus Scandecor Marketing AB [2002] FSR 122 at 33. Observes that, A Trademark Acts as a badge of origin and stresses that inherent in the definition in the UK Trademarks Act 1994 is the notion that distinctiveness as to business source is the essential function of trademarks. 

Furthermore, Section 9 of the Trademark’s Act 2010 is to the effect that Distinctiveness requisite for registration under Part A.

(1) In order for a trademark other than a certification mark to be registered in Part A of the register, the trademark shall contain or consist of at least one of the following essential particulars—

(a) the name of a company, individual or firm, represented in a special or particular manner;

(b) the signature of the Applicant for registration or of some predecessor in his or her business;

(c) an invented word or invented words;

(d) a word or words having no direct reference to the character or quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname; or

(e) any other distinctive mark, but a name, signature or word or words, other than words within the descriptions in paragraphs (a), (b), (c) and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.

(2) For the purposes of this section, “distinctive” means—

(a) in the case of a trademark relating to goods, adapted in relation to the goods in respect of which the trademark is registered or proposed to be registered, to distinguish goods with which the owner of the trademark is or may be connected, in the course of trade, from goods in the case of which no connection subsists; or

(b) in the case of a trademark relating to services, adapted in relation to services in respect of which the trademark is registered or proposed to be registered, to distinguish services with which the owner of the trademark is or may be connected in the course of trade, from services with the provision of which he or she is not connected, generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trademark is adapted to distinguish as goods or services, the Registrar or the court may have regard to the extent to which—

(a) the trademark is inherently adapted to distinguish goods or services; and

(b) by reason of the use of the trademark or of any other circumstances, the trademark is in fact adapted to distinguish goods or services.”

In relation to the case of Nairobi Java House Ltd v Mandela Auto Spares Ltd[31] the court observed that

Section 9 (1) makes it essential that the trademark shall contain one of the essential characteristics. In relation to the Respondent which is a limited liability company the name of the company or the signature of the Applicant or and invented word or words. The first three considerations do not apply to the Respondent. The trademark “Cafe’ Javas” does not have the company name of the Respondent which is Mandela Auto Spares Ltd. Secondly it does not have the signature of the Applicant. Thirdly it does not have an invented words or words unless we accept that the word “Javas” is not “Java”.  I will therefore consider the other parts of section 9 (1) namely (d) and (e). As far as item (d) is considered the trademark may consist of a word or words having no direct reference to the character or quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname. In other words the words “Café Javas” had to have no direct reference to the character or quality of goods or services in respect of which it is registered. Secondly it should not be a geographical name or surname. The word Java is a place in Indonesia and is a geographical name referring to an Island.  Secondly from the Registrars ruling it is also means coffee. The word Café means coffee.

I have checked the evidence and dictionary meanings relied on. Among the evidence considered is that “Java Coffee” refers to coffee beans produced in the Indonesian Island of Java. Several of the Café Java or Java Café hits on the internet search relied on by the Appellant and referred to by the Registrar of Trademarks refer to restaurants in the USA, Australia and UK among others and where among other things coffee is served. I have also considered the conclusion of the Registrar.

Court thus held that,

Furthermore the trademarks of parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported.

4.    Reputation of the marks: The courts evaluate the popularity, goodwill, and fame of the marks among consumers

In HAG II[32] the Court observed that:

"Consequently, as the Court has stated on many occasions, the specific subject-matter of a trade mark right is to grant the owner the right to use the mark for the first marketing of a product and, in this way, to protect him against competitors who would like to abuse the position and reputation of the mark by selling products to which the mark has been improperly affixed. To determine the exact effect of this exclusive right which is granted to the owner of the mark, it is necessary to take account of the essential function of the mark, which is to give the consumer or final user a guarantee of the identity of the origin of the marked product by enabling him to distinguish, without any possible confusion, that product from others of a different provenance:

In the case of Nairobi Java House Ltd, v Mandela Auto Spares Ltd[33] court rejected the notion that the respondent’s trademark was in place for over 7 years thus had established their reputation, court was of the view that Nairobi Java House though not established in Uganda had gained the trademark prior

The Paris Convention for the Protection of Industrial Property, to which both Uganda and Kenya are parties, addresses the registration of foreign marks. Article 6 of the Convention emphasizes the independence of protection of a mark registered in one country from marks in other countries, maintaining the principle of territoriality.

Considering the Convention's provisions, it becomes evident that the Registrar overlooked the Appellant's prior registration in Kenya, a material factor for consideration. The length of time a mark has been in use, as stipulated in the Convention, is a relevant aspect, supporting the Appellant's case.

Domestically, the Ugandan Trademarks Act 2010 aligns with the Paris Convention principles under sections 44 and 45. These sections emphasize that the mark registered first in time takes precedence, promoting freedom of movement of goods and services within the East African Community.

Section 45 further grants the court authority to remove a later-registered trademark if it closely resembles a foreign-registered mark. The East African Community Treaty, under article 7, promotes free movement of goods and services, emphasizing the principle of complementarity.

In essence, the Registrar's decision contradicts the principles of the East African Community, restricting the registration of a trademark previously registered in Kenya, thus hindering the free movement of services.

5.    Intention of the infringers: The courts examine the motive, knowledge, and conduct of the infringers in using the marks.

The court observed in the case of Nice House of Plastics v Hamidu Lubega[34] that While the intention of the defendant may indeed have been to pass off his goods as those of the plaintiff, the incomplete nature of the attempt leads the Court to the view that a case of passing off has not been sufficiently made out.

Courts have further observed in the case of STANDARD SIGNS UGANDA LTD V FRED LEO OGWANG T/A SHANDARD & ANOR[35] that I do not see any other intention for the deliberate infringement of a trade name and a trademark other than for the sole purpose of confusing the public and taking advantage of the reputation and the good will they have acquired in the market.

In Tussaud v Tussaud [1890 M. 764] Chancery Division Vol. XLIV 679 an action was commenced by a company called “Madam Tussaud & Sons Ltd” against Louis J. Tussaud. The plaintiff by their writ claimed an injunction to restrain the respondent from applying to the Registrar of Joint Stock Companies in England for registration under the Companies Act any company to be incorporated under the name of Louis Tussaud Ltd or any other name so nearly resembling the name of the plaintiff company as to be calculated or likely to mislead or deceive the public into the belief that the company being incorporated was the same as the plaintiff company.

In granting the injunction sought in that case, Sterling, J at page 693 quoted with approval what Lord Justice Cotton stated in Turton v Turton 42 Ch. D. 144 that:

“I do not in any way say that fraud is necessary to induce the court to interfere except this, as I said before. When a man knows that the natural consequence of what he is doing is to present his goods as the goods of somebody else, then it is wrong on his part to continue that act”.

Applying that authority to the instant case, the natural consequence of what the 2nd defendant did was to present its products as the plaintiff’s. The whole intention would be for passing off the goods/products or services in respect of which the plaintiff’s trademark was registered

6.    Actual confusion among consumers: The courts look at the perception, association, and behavior of consumers in relation to the marks.

As already observed in the case of A-Plus Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB[36] Justice Ssekaana highlighted the significance of guarding against double registration, citing the Pentecostal Assemblies of God case[37], which emphasized the potential for confusion among the public due to identical names. The plaintiff argued that the phonetic similarity between the names would confuse the funeral service industry's customers. However, the court disagreed, asserting that customers in this industry are generally attentive and discerning.

He held as follows, “This court does not agree that the similar phonetic sound is likely to cause confusion to the public in the funeral service industry. The customer in the nature of business is generally attentive, discerning, well-informed, reasonably observant and circumspect. Such a user is less likely to be confused as to particulars of a funeral service provider than an ordinary mourner or bereaved customer or someone procuring services on behalf of a bereaved client. The issue of confusion of marks, names at issue must not be considered from the point of view of the average hurried or confused consumer having an imperfect recollection of the opponent’s mark or name who might encounter the name of the plaintiff. That does not mean a rash, careless or unobservant purchaser(customer) on one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived. The standard is not that of people “who never notice anything” but of persons who take more than “ordinary care to observe that which is staring them in the face”. See Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 page 803-811

Similarly in WAVE VS WAVE EXPRESS, Uganda Registration Services Bureau (URSB)[38] Wave Inc brought opposition proceedings against the registration of Wave Express on grounds similarity leading to a likelihood of confusion, though the opponent’s Wave mark was not registered in Uganda, they grounded their plea on the principle of well-known marks. Wave Inc unsuccessfully argued that its mark is a well-known mark that enjoyed protection under S.47 of the Ugandan Trademarks Act.

The Assistant Registrar of Trademarks reasoned and held that protection of well-known marks is only applicable to defensive marks/registration and that the same is not available to any well-known mark but rather to “exceptionally well-known” marks under the provisions of Sections 47(2) and 44 of the Ugandan Trademarks Act. The opposition succeeded.

The courts also consider the specific challenges and complexities that arise in different scenarios, such as:

1. Use of foreign languages: The courts may check the meaning, pronunciation, and transliteration of the marks, and the level of awareness and understanding of the consumers of the foreign language.

As seen in the case of Nairobi Java House Ltd, v Mandela Auto Spares Ltd where court observed that  that the word Java is an ordinarily word, that it is a geographical place in Indonesia, that it refers to coffee and computer programming language and that this word is associated with the business of trademarks, like the word “Cafe’” it can be used as a descriptive term to refer to such business in class 43 where coffee is served. On the basis of that holding, the registrar erred in law not to find that the word Java is a descriptive term as held above and properly disclaimed by the appellant.

Use of the internet and social media: The courts may review the domain names, website designs, online advertisements, and social media posts of the parties, and the likelihood of confusion among online consumers.

According to Article15 of TRIPS[39] Agreement defines a trade mark as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks In the world of domain names, the only form of trademarks which are capable of being used as a domain name is word mark

Esteemed scholar Mohammad S. Al Ramahi[40] in his paper Internet domain names & Trademark Law: Does the current legal scheme provide an adequate protection to domain names under the US & the UK jurisdictions? He notes that

The potential conflict between domain names and trademarks is far broader than the problem of cybersquatting. The domain name system presents a series of conflicts with the basic principles of global trade mark law. Conflicts between trademark rights and domain name registrant occur in a number of settings

1.    An act of cybersquatting: Cybersquatting occurred when a third party registering someone’s trademark as a domain name with the intention to offer it back to the true owner at a substantial fee. The law of Trademark interferes here to protect the true owner who has the exclusive right to the trademark. Cybersquatting acts have been criminalized in many countries in the world. This is to protect the legal owners from

2.    Genuine disputes: when two or more parties with independent and legitimate rights for the same trademark in different lines of business or jurisdictions seek the same domain name, disputes occur[41]. This kind of disputes occurred at two different levels, firstly, when the same mark owned and used by different persons in respect of different goods or services specialty.

Secondly, when the same mark owned and used by different persons in different countries in relation to the same goods or services territoriality.

The case of prince. Com is a good example of this. In Prince plc v Prince Sports Group Inc[42], Prince plc in the UK firstly registered the domain name prince.com and was challenged by Prince Sports Inc. in the US. The court decided that the name to remain with Prince plc

• Use of composite or stylized marks: The courts may identify the dominant or distinctive elements of the marks, and the effect of the additional or decorative elements on the overall impression of the marks.

• Use of generic or descriptive terms: The courts may determine the degree of distinctiveness or secondary meaning acquired by the marks, and the extent of protection or limitation afforded to the marks.

The court observed in A-plus v A-class that The issue of confusion of marks, names at issue must not be considered from the point of view of the average hurried or confused consumer having an imperfect recollection of the opponent’s mark or name who might encounter the name of the plaintiff.

That does not mean a rash, careless or unobservant purchaser(customer) on one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived. The standard is not that of people “who never notice anything” but of persons who take more than “ordinary care to observe that which is staring them in the face”. See Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 page 803-811

The courts would not consider a confused or unobservant mourner like DWIII but rather a reasonable and intelligent mourner who is conversant with the details of companies engaged in the business of funeral services in Uganda.

Furthermore, in Abro Industries Inc vs Abri General Traders[43] The law permits co-existence of a trademark & different enterprises can use similar trademarks without interfering with each other’s business[44]. The appellant argued that the Respondent’s mark ABRI was phonetically and conceptually identical to it’s ABRO Trademark Court ruled that there was no danger of confusion for the Appellant’s mark and the Respondent’s mark to co-exist in Tanzania. Court emphasized the rule that likelihood of confusion is determined by nature of the commodity, the class of its purchasers, and the mode of purchase and and found that the two marks were not similar and could not cause confusion

In conclusion therefore, the courts apply the likelihood of confusion test on a case-by-case basis, taking into account the totality of the circumstances and the balance of interests of the parties. The courts may also refer to the international standards and practices, such as the Nice Classification and the WIPO Joint Recommendation, to guide their decisions.

6      HOW DO THE UGANDAN COURTS ALIGN THEIR LIKELIHOOD OF CONFUSION DECISIONS WITH THE INTERNATIONAL AND REGIONAL CONVENTIONS AND AGREEMENTS ON TRADEMARK PROTECTION, SUCH AS THE PARIS CONVENTION, THE TRIPS AGREEMENT,

The Ugandan courts have adopted some of the principles and standards of the international and regional conventions and agreements on trademark protection, such as the Paris Convention, the TRIPS Agreement, in their decisions on likelihood of confusion. For example: 

In the case of Nairobi Java House appealed the Registrar’s decision to the high court. In CIVIL APPEAL NO 13 OF 2015.  The court observed that since Kenya and Uganda are parties to the Paris Convention, it should be noted that sections 44 and 45 of the Uganda Trademarks Act (which domesticate some of the principles in the Paris Convention) provide that the mark registered first in time takes priority to a later trademark in case of resemblances.

Section 45 further gives the court jurisdiction to remove from the Register a trademark which is registered after a foreign registered mark in case the mark registered in Uganda is identical with or nearly resembles a trademark of the plaintiff registered in a foreign country in respect of the same services and registered prior in time.

Further, the court states that, in reference to Article 7 of the Treaty for the Establishment of the East African Community (EAC), the decision of the Registrar stifles free movement of services within EAC by restriction on the registration of a trademark registered prior in time in Kenya on the ground of registration of a trademark albeit registered later in time to Uganda.

6. CONCLUSION.

In conclusion, this paper has extensively explored the likelihood of confusion test in intellectual property law within the context of Uganda, drawing comparisons to international and regional conventions and agreements on trademark protection.

Specifically, the examination encompassed key treaties such as the Paris Convention, the TRIPS Agreement. The analysis revealed that while Ugandan courts have integrated certain principles and standards from these international frameworks into their decisions on likelihood of confusion, deviations have also been observed.

The study highlights the unique legal landscape in Uganda, where the Trademarks Act of 2010 serves as the primary legislation for trademark registration and enforcement. However, challenges and inconsistencies persist in the application and interpretation of the Act, raising questions about how Ugandan courts address issues like the use of identical marks and the adaptability of the likelihood of confusion test to changing market conditions.

Examining key cases, such as Nice House of Plastics v Hamidu Lubega, Vision Impex Limited v Sansa & Anor, Anglo Fabrics (Bolton) Ltd v African Queen Ltd, Nairobi Java House Ltd, v Mandela Auto Spares Ltd and A-Plus Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB  provides insights into how Ugandan courts approach trademark infringement and passing off claims. These cases emphasize the importance of proving a likelihood of confusion, and the courts have consistently considered factors like the similarity of marks, the nature of goods or services, the potential for consumer confusion and more recently the Phonetic similarity test is not applicable in company registration.

In conclusion, while Uganda has made strides in aligning its laws with international and regional conventions, there is room for refinement and clarity in the application of the likelihood of confusion test. The study recommends ongoing efforts to enhance legal principles, consider evolving market dynamics, and ensure a robust framework for trademark protection in Uganda.

By

WABOGA DAVID- Legal Researcher

For any inquiries reach out wabogadavid@gmail.com 

NOTE TO READERS

Thank you for reading this article. I hope you found it useful and informative. Please note that the above analysis is intended for informational purposes only and does not constitute legal advice. The information provided is based on publicly available sources and general principles of law as of the date of the analysis. Laws and regulations may vary, and legal interpretations can change over time. Readers are advised to consult with qualified legal professionals for advice tailored to their specific circumstances. The author and the platform shall not be held responsible for any inaccuracies, errors, or omissions in the content or for any actions taken in reliance on the information provided.

Bibliography

[1]Uganda is a signatory of the Banjul Protocol which means it can be designated for the purposes of registering trade marks using the ARIPO trade mark system. Member states conduct substantive examination of applications after which ARIPO registers the trade marks on behalf of its members and subsequently administers the registrations in terms of the Banjul Protocol. https://intellectual-property-helpdesk.ec.europa.eu/system/files/2021-11/09_Uganda_final_2.pdf Accessed at 1/19/2024 2:43:32 PM

[2] Laham Act, 15 USA

[3] URSB COUNTRY REPORT UGANDA Retrieved from https://www.wipo.int/edocs/mdocs/africa/en/wipo_ipas_tm_gbe_17/wipo_ipas_tm_gbe_17_t_8_q.pdf Accessed at 1/27/2024 2:10:54 AM

[4] Black’s Law Dictionary 6th Edition (By the Publisher’s Editorial Staff) 1990.Pg. 925

[5] Cornell Law School retrieved from https://www.law.cornell.edu/wex/lapp_test#:~:text=A%20likelihood%20of%20confusion%20exists%20when%20an%20allegedly%20infringing%20trademark,it%20is%20used%20to%20identify. Accessed at 1/26/2024 1:54:56 PM

[6] The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946. The Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur. (Sourced from : https://www.law.cornell.edu/wex/lanham_act accessed at 1/26/2024 2:05:04 PM)

[7] Mixed Signals in Trademark's "Likelihood of Confusion Law": Does Quality Matter?, 44 Val. U. L. Rev. 659 (2010). Available at: https://scholar.valpo.edu/vulr/vol44/iss2/8 Accessed at 1/26/2024 2:39:10 PM.

[8] PAUL GOLDSTEIN & R. ANTHONY REESE, COPYRIGHT, PATENT, TRADEMARK AND RELATED STATE DOCTRINES 167 (6th ed. 2008) (“The fundamental legal principles that govern trademarks and prohibit passing off evolved at common law, primarily as a matter of state law.”).

[9] RESTATEMENT (FIRST) OF TORTS § 731 (1938). Section 731 states: In determining whether one’s interest in a trade-mark or trade name is protected, under the rules stated in §§ 717 and 730, with reference to the goods, services or business in connection with which the actor uses his designation, the following factors are important: (a) the likelihood that the actor’s goods, services or business will be mistaken for those of the other; (b) the likelihood that the other may expand his business so as to compete with the actor; (c) the extent to which the goods or services of the actor and those of the other have common purchasers or users; (d) the extent to which the goods or services of the actor and those of the other are marketed through the same channels; (e) the relation between the functions of the goods or services of the actor and those of the other; (f) the degree of distinctiveness of the trademark or trade name; (g) the degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other; (h) the length of time during which the actor has used the designation; (i) the intent of the actor in adopting and using the designation.

[10] Lanham Act, Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified at 15 U.S.C. §§ 1051– 1072). See Irene Calboli, Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone, 57 FLA. L. REV. 771, 803 (2005) (acknowledging the Lanham Act for its role in emphasizing the importance of protecting the goodwill created by trademarks)

[11] 15 U.S.C. § 1051 (2006) (requiring an applicant to include in the application specifications of the following: applicant’s domicile and citizenship, the date the mark was first used in commerce, the goods in connection to the mark, and a drawing of the mark). See also Petition for Writ of Certiorari Brief at 4, Gibson Guitar Corp. v. Paul Reed Smith Guitars, L.P., 547 U.S. 1179 (2006) (No. 05-1263), 2006 WL 858515 [hereinafter Gibson Guitar Petition for Writ of Certiorari] (noting that a user’s mark shall be incontestable after five years of consecutive use subsequent to filing).

[12] Anne Hiaring, Basic Principles of Trademark Law, in PRACTICING LAW INST., UNDERSTANDING TRADEMARK LAW: 2007, at 27, 30 (2007). “In the United States, the establishment of ownership rights in trademarks and service marks requires either the: 1) filing of intent to use applications to register with the United States Patent and Trademark Office, or 2) actual use of the mark in commerce.” Id. See 15 U.S.C. § 1125 (also known as Lanham Act § 43(a)) (outlining the steps necessary for proving a trademark infringement when the trademark has not yet been registered with the United States Patent and Trademark Office).

Section 43(a) states in part: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act

[13] See supra note 20 and accompanying text (outlining the methods to establish ownership rights in a trademark and receive Lanham Act protection for the trademark.

[14] See infra Part II.B (analyzing the legal analysis examined in the administration of trademark infringement suits)

[15] The Trademarks 2010

[16] Trademarks Regulations 2012

[17] Nice House of Plastics v Hamidu Lubega (HCT-00-CC-CS 695 of 2006) [2007] UGCommC 58 (31 May 2007)

[18] Vision Impex Limited v Sansa & Anor (Civil Suit No. 303 of 2013) [2017] UGCommC 59 (6 June 2017)

[19] ANGLO FABRICS (BOLTON) LTD & ANOR Versus AFRICAN QUEEN LTD & ANOR HCT-00-CC-CS-0632-2006

[20] Standard Signs Uganda Ltd v Fred Leo Ogwang T/a Shandard & Anor (High Court Civil Suit No. 240 of 2006) [2012] UGCommC 9 (23 February 2012)

[21] Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016)

[22] Sec 26 of the Trade Marks Act 2010 outlines the conditions under which the registrar or the court, when considering applications for registration of identical or resembling trademarks, may require the owner to make disclaimers. If a trademark, whether for goods or services, contains common or non-distinctive elements, the registrar or court can impose conditions, such as requiring the owner to disclaim the exclusive right to use certain parts of the trademark. The disclaimer, once entered on the register, does not impact the owner's overall rights, except in cases where it specifically relates to the registration in question.

[23] This refers to the fifth section of Article 6 in the Paris Convention. In legal texts, "quinquies" is a Latin term meaning "fifth."

[24] ibid

[25] A-Plus Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB Civil Suit No. 355 of 2020

[26] Supra 20

[27] Wagamama Ltd v. City Centre Restaurants PLC, [1995] FSR 713 (Ch. D.)

[28] SA CNLSUCAL NV v HAG GF AG [1990] 3 CMLR 571 (HAG II).

[29] The Eastman Photographic Materials Company, Limited Appellants; v The Comptroller-General. [1898] A.C. 571

[30] STANDARD CAMERAS LD.'S APPLICATION TO REGISTER A TRADE MARK. (1952) 69 RPC 125

[31] Supra 20

[32] Supra 27

[33] Supra 20

[34] 16

[35] Supra 19

[36] Supra 24

[37] Pentecostal Assemblies of God Limited v Pentecostal Assemblies of God Lira Limited HCCS No. 97 of 2015[2019] UGHCCD 217

[38] Notable Intellectual Property Decisions from East Africa, in 2023 - ALN Accessed at 1/27/2024 2:03:35 AM

[39] Trade-Related Aspects of Intellectual Property Right

[40] Al Ramahi, M.S., 2006, April. Internet Domain Names & Trademark Law: Does the Current Legal Scheme Provide and Adequate Protection to Domain Names under the US & UK Jurisdictions?. In Paper delivered at the 21st BILETA Conference: Globalisation and Harmonisation in Technology. Retrieved from https://www.bileta.org.uk/wp-content/uploads/Internet-domain-names-and-trademark-law-does-the-current-legal-scheme-provide-an-adequate-protection-to-domain-names.pdf Accessed at 1/27/2024 1:22:56 AM

[41] WilliamA.Tanenbaum.RightsandRemediesforthreecommontrademark-domainnamedisputes, at 9

[42] Prince plc v Prince Sports Group Inc [1998] FSR 21

[43] Abro Industries Inc vs Abri General Traders (Civil Appeal No. 323 of 2021) [2023] TZHC 19740 (7 June 2023)

[44]Notable Intellectual Property Decisions from East Africa, in 2023 Notable Intellectual Property Decisions from East Africa, in 2023 - ALN Accessed at 1/27/2024 1:57 AM