"The existence of an earlier, unregistered Trade Mark with established goodwill can be a ground for refusal or cancellation of a later registration." Affirms the High Court of Uganda

Introduction

Imagine filing a trademark in Uganda with URSB, investing in brand-building, only to discover years later that another company, operating under an identical name, was granted registration due to a lost file at the Registry. The ensuing confusion isn’t just commercial; it’s legal, raising profound questions about who truly owns a mark when administrative lapses collide with statutory deadlines.

This court update analyzes the decision of Liberty Group Limited v Loreal Logistics Limited and Another (Civil Appeal No. 79 of 2023) [2025] UGCommC 407 (4 November 2025) reaffirming the primacy of the “first-to-file” principle under The Trade Marks Act, 2010 (as amended). The Court overturned the Registrar of Trademarks’ decision permitting concurrent use of identical marks, holding that the first applicant retains priority even amid registry errors or procedural delays.

In a decision with sweeping implications for brand owners, the Court clarified how constructive use, bad faith filings, and well-known mark protections interact within Uganda’s trademark regime. The judgment not only restores faith in administrative accountability but also aligns Uganda’s system more closely with international standards under the Paris Convention and TRIPS Agreement.

Facts

The Appellant, Liberty Group Limited, a South African financial services company specializing in insurance and asset management, filed Trademark Application No. 45153 for the mark “LIBERTY” in Class 36 (covering insurance, financial affairs, monetary affairs, and real estate affairs) on April 16, 2012.

The application was advertised in the Uganda Gazette on July 27, 2012, but stalled due to the physical loss of the file at the Trademarks Registry. This prevented examination and progression within the 12-month non-completion period under Section 16(3) of The Trade Marks Act and Regulation 40 of The Trademarks Regulations, 2012.

On April 2, 2013—two weeks before the Appellant’s 12-month priority window expired, the Respondent, Liberty (ICD) Limited (a Ugandan entity involved in logistics, real estate, and related services), filed Application No. UG/T/2013/047160 for an identical “LIBERTY” mark in the same Class 36. Despite the Appellant’s pending application, the Registry approved the Respondent’s mark without detecting the conflict, issuing a registration certificate on July 22, 2013 (Trademark No. 47160).

The Respondent later assigned the mark internally and renewed it in 2020 for another ten years.

The Appellant, operating in Uganda since 2006 through its subsidiary Liberty Life Assurance Uganda Limited, held prior registrations incorporating the “LIBERTY” mark in other classes—e.g., Nos. 31623 and 31719 (2009) for paper goods and pharmaceuticals, and No. 50303 (2016) for advertising.

It claimed extensive use of the “LIBERTY” mark since 2006, including nationwide advertising campaigns, active websites (www.liberty.co.ug and www.libertyhealth.net/uganda), and operations in over 24 countries, establishing significant goodwill and reputation in Uganda.

Upon discovering the conflict in 2018, the Appellant sought reconsideration. The Registrar initially recalled the Respondent’s certificate on October 23, 2018, citing the prior pending application, but reversed this decision on July 17, 2019, asserting that there was no power to recall issued certificates. On March 5, 2021, the Appellant applied to cancel the Respondent’s registration under Sections 50 and 88 of The Trade Marks Act.

In a July 14, 2023 ruling, the Registrar upheld the Respondent’s registration, citing the Appellant’s delay, the Respondent’s eight years of unchallenged use, and ordered concurrent use under Section 27, with conditions to minimize confusion (e.g., mark modifications).

The Appellant then appealed to the High Court.

Issues

The appeal raised thirteen grounds, which the Court consolidated into six key issues:

1. The competence and scope of the appeal under Section 52 of The Trade Marks Act and Regulation 90 of The Trademarks Regulations, 2012;

2. Whether the Registrar erred in attributing delay to the Appellant and applying laches while ignoring systemic Registry failures;

3. Whether the Registrar misapplied the first-to-file principle under Section 25, thereby overlooking the Appellant’s priority;

4. Whether the Respondent’s filing constituted bad faith under Sections 9(2) and 41, given its knowledge of the prior pending application;

5. Whether the Respondent’s post-registration use overrode the Appellant’s prior goodwill and well-known status under Sections 35 (passing off) and 47; and

6. Whether concurrent use under Section 27 was justified, or whether cancellation under Section 88 was necessary to prevent inevitable public confusion.

Submissions

Appellant’s Submissions

Counsel for the Appellant argued that the Registrar erred in penalizing its delay, which resulted from the Registry’s file loss and its failure to issue a non-completion notice under Section 16(3). It emphasized that its 2012 filing predated the Respondent’s, thereby entitling it to priority under the first-to-file principle. Consequently, the Respondent’s registration was erroneous and cancelable under Section 88.

Bad faith was imputed to the Respondent due to its inadequate search (contrary to Regulation 23) and its strategic timing of filing just before the Appellant’s deadline, conduct amounting to exploitation of the pending application and the Appellant’s goodwill built over 25 years globally and in Uganda.

The Appellant argued that “LIBERTY” qualified as a well-known mark under WIPO factors (extensive advertising, sales, and recognition), warranting protection beyond defensive registration (Section 47) and justifying opposition or invalidation.

The Appellant contended that concurrent use was inappropriate in the absence of honest prior concurrency and that laches could not bar equitable relief where public confusion was inevitable.

It sought to have the ruling set aside, the Respondent’s mark canceled, and its own application registered.

Respondent’s Submissions:

The Respondent countered that it had complied with all procedural requirements, including conducting a pre-filing search (supported by a payment receipt dated April 2, 2013), and that no opposition was filed during its Gazette publication (April 26, 2013).

It argued that the Appellant’s six-year inaction following its 2012 filing, and eight-year delay in initiating cancellation proceedings, invoked laches and acquiescence, thereby prejudicing the Respondent’s nine years of brand-building by 2021.

The Respondent denied bad faith, attributing the conflict to Registry error, and invoked Section 27 to justify concurrent use due to “special circumstances” namely, the Appellant’s delay and both parties’ bona fide use.

It further submitted that “well-known” status under Section 47 applies only to defensive registrations, not cancellation, and that Section 44 protections relate to opposition proceedings, not post-registration challenges. The Respondent therefore sought dismissal of the appeal and confirmation of concurrent use.

Legal Representation

1. For the Appellant: M/s MMAKS Advocates

2. For the Respondent: M/s K & K Advocates

🧾 Court’s Findings

The Court, sitting as the first appellate body, conducted a de novo re-evaluation of the entire record under Section 52 of the Trade Marks Act, 2010. It found that the Registrar of Trademarks, acting under Section 50, had exercised quasi-judicial discretion erroneously in both law and fact, thereby justifying appellate interference, citing National Insurance Corporation v. Mugenyi & Co. Advocates [1987] HCB 28.

i. Competence and Scope of the Appeal

The Court first confirmed that the appeal was properly before it, having been filed within the 60-day statutory limit under Regulation 90 of the Trademarks Regulations, 2012. It reiterated the broad scope of a first appeal, noting that:

“Unless it is otherwise specifically circumscribed by statute, the scope of a first appeal involves a full re-evaluation of both facts and law, with the appellate Court tasked with re-examining all evidence and reconsidering the materials before the tribunal below, to make its own independent decision.”

ii. Delay and Laches

The Court attributed the delay in registration primarily to systemic failures at the Registry including a lost file and failure to issue a non-completion notice not to any fault of the appellant. Accordingly, Sections 16(3) and Regulation 40 preserved the appellant’s priority rights within the 12-month filing window ending April 16, 2013.

“These provisions are triggered by any delay arising ‘by reason of default on the part of the applicant,’ and not otherwise... The appellant therefore cannot be held accountable for a delay which was systemic and out of its control.”

However, the Court noted that the appellant’s post-2013 inaction until 2018 was unreasonable, partially upholding laches as to monetary damages but not as to injunctive or cancellation relief:

“The appellant inexcusably and unreasonably delayed in bringing its claim... Accordingly, the Assistant Registrar cannot be faulted for his conclusion on this issue and for that reason this ground fails.”

Nevertheless, the Court reaffirmed that public confusion overrides laches in trademark disputes:

“While a successful laches defence will typically bar recovery of damages, it will not prevent a Court from cancelling or enjoining a confusing mark, since trademark law also protects the public from confusion.” [Para 46]

iii. Application of the First-to-File Principle

Reaffirming Section 25, the Court held that priority is determined by the filing date, subject only to limited statutory exceptions. Uganda’s trademark system is “hybrid”—primarily first-to-file but recognizing good faith prior use under Section 41.

“The ‘first to file’ principle grants exclusive rights to the applicant who files first. By virtue of Section 41, first-to-use elements exist within what is primarily a first-to-file system... The evidence showed the appellant had used the trademark since 2006. The Assistant Registrar therefore misdirected himself in disregarding the ‘first good faith user’ exception.”

iv. Bad Faith in the Respondent’s Application

The respondent’s application filed two weeks before the expiry of the appellant’s 12-month priority window was made without adequate search or diligence, supported only by a UGX 150,000 receipt instead of the prescribed UGX 25,000 fee. This, the Court held, constituted prima facie bad faith under Sections 9(2), 41, and Regulation 23.

“Applying for an identical or confusingly similar mark to one that is already pending registration can be strong prima facie evidence of a ‘bad faith’ application.” [Para 72]“The respondent is deemed to have known... that the appellant was using and had applied earlier for registration of an identical or confusingly similar mark.” [Para 73]

The Court criticized the Registrar for “glossing over” this defect:

“Lack of such a record ought not to be glossed over as the Assistant Registrar did... The respondent should have been aware that the mark was already applied for... The Assistant Registrar therefore misdirected himself in finding no bad faith.”

v. Bona Fide Prior Use

The Court found no evidence of respondent’s pre-2013 use; its alleged “eight years” of use arose only after its erroneous registration:

“The respondent provided no evidence of use of the trademark prior to its application for registration... A prior user with established goodwill can rely on that use to prevent a later registration that would harm their business, even if the later mark was filed first.”

vi. Well-Known Trademark Status

The Court held that the Registrar wrongly confined the concept of a “well-known mark” to defensive registrations. The doctrine applies equally in invalidation and passing off actions.

“A trademark that is well-known outside Uganda can also be recognised and protected under the common law in Uganda, even though the trademark owner has not registered or used that trademark in Uganda... The well-known trademark standard is applied in opposition and invalidation proceedings to curtail parasitic behaviour.”

The appellant demonstrated goodwill and public recognition since 2006, satisfying WIPO well-known mark factors:

“The appellant established broad public awareness of its mark and extensive exposure in various media. There was widespread market recognition and product-based association with the relevant public.”

Under Section 88, erroneous entries can be expunged to protect both brand owners and the public.

vii. Concurrent Use and “Other Special Circumstances”

The Court rejected the Registrar’s reliance on Section 27, finding no honest pre-registration concurrency and no special circumstances to justify concurrent use:

“Honest concurrent use generally cannot be founded on post-registration use arising from an error or omission by the Registry... The ‘other special circumstances’ exception cannot be invoked where the opposed trademark was registered in bad faith or creates confusion in the market.”

viii. Public Interest and Appropriate Remedy

The Court emphasized that trademark law protects both private rights and the public interest by ensuring honest trading and preventing confusion:

“The public interest needs to be maintained to promote honest trading... A trademark ought to be cancelled not only when it infringes prior rights but also where public confusion between the marks is inevitable.”

The Registrar’s ruling was therefore “so clearly wrong as to amount to an injustice.”

🏛️ Holding

The appeal succeeded in its entirety.

The Court set aside the Registrar’s ruling of 14 July 2023 and ordered:

1. Cancellation of the Respondent’s Trademark No. 47160 “LIBERTY” in Class 36; and

2. Registration of the Appellant’s Application No. 45153 “LIBERTY” in Class 36.

3. Costs were awarded to the Appellant in both the appeal and the cancellation proceedings.

🧩 Key Takeaways

1. First-to-File Rule with Protective Safeguards

Uganda’s hybrid trademark regime—anchored in the first-to-file rule under Section 25, but tempered by prior good faith use under Section 41—confers nationwide priority on a pending application for up to twelve months under Section 16(3).Applicants who fail to conduct adequate searches before filing risk cancellation if earlier filings or uses are later discovered.

2. Bad Faith Broadly Interpreted

The Court confirmed that bad faith is not limited to outright dishonesty; it encompasses commercially unacceptable conduct, such as filing a mark during another’s priority window or without due diligence.Importantly, registry errors do not absolve a later filer from responsibility or preserve a mark registered in bad faith.

3. Expanded Protection for Well-Known Marks

The judgment affirmed that well-known marks enjoy protection beyond defensive registration (Section 47). They can ground actions for passing off under Section 35 and cancellation or invalidation under Section 88, even when unregistered.Evidence of long-standing use, advertising, and public recognition in Uganda can suffice to establish well-known status.

4. Limits on Statutory Exceptions

The “honest concurrent use” exception under Section 27 applies only where there is bona fide, pre-filing use with minimal likelihood of confusion.While laches may bar monetary recovery, it cannot defeat cancellation or injunctive relief where public confusion is evident—the public interest remains paramount.

5. Practical Guidance for Brand Owners

• Monitor pending applications closely and act promptly on potential conflicts.

• Ensure searches and filings are properly documented to demonstrate good faith.

• The Registrar must issue non-completion notices to avoid deemed abandonment of applications.

• Multinationals should maintain evidence of Ugandan market goodwill to strengthen protection under the Paris Convention and TRIPS Agreement.

  
  

⚖️ Conclusion

This decision reinforces Uganda’s alignment with international trademark standards while underscoring administrative accountability in the registration process.Brand owners should audit existing portfolios, document usage, and adopt vigilant monitoring strategies to safeguard their rights.

Read the full case below

Liberty Group Limited v Loreal Logistics Limited and Another 2025 UGCommC 407 (4 November .

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