Uganda Assistant Registrar of Trademarks Orders Cancellation of “Black Zebra” Trademarks for Confusion with “Four Star Zebra” Mark

Waboga David
Sep 16
5 min read

Heard Before

KUKUNDA LYNETTE AFRICA - ASST. REGISTRAR OF TRADEMARKS

Background

Four Star Beverages Limited (the Applicant) filed an application on April 12, 2023, seeking rectification of the Trademark Register by canceling two trademarks owned by Prime Care International Limited (the Respondent). The contested trademarks, registered on June 14, 2021, were UG/T/2020/068855 in Class 33 (alcoholic beverages, including wines and spirits). UG/T/2020/068856 in Class 32 (non-alcoholic beverages, including carbonated drinks and mineral water).

The Applicant argued that the “BLACK ZEBRA” marks were likely to deceive or cause confusion in the market and dilute the reputation of its established “FOUR STAR ZEBRA” trademark, registered in 2014 in Class 33. The Respondent countered that the marks were sufficiently distinct and that the Applicant’s claims were unfounded.

Legal Representation

The Applicant was represented by Agaba Richard and Dorothy Bishagenda of Birungyi Barata & Associates, while the Respondent was represented by Angela Kobel and Patricia Auma of Kiiza & Kwanza Advocates.

Key Issues

The Registrar reframed the issues for determination as follows:

Whether the Respondent’s mark was registered in error?
Whether the Respondent’s mark was filed in bad faith?
Whether the Applicant’s mark should be removed for non-use?
Whether the Respondent’s use of the impugned mark on its products amounts to infringement of the Applicant’s registered mark?
What remedies are available to the parties?

Parties’ Submissions

Applicant

The Respondent’s marks are confusingly similar to “FOUR STAR ZEBRA.”

Both marks share the dominant word “ZEBRA” and zebra imagery, targeting the same consumer market in alcoholic beverages.

This similarity risks confusion, association, and unfairly trades on the Applicant’s goodwill.

Respondent

The marks are visually distinct—different zebra depictions, colors, and accompanying words.

The term “ZEBRA” is generic and cannot be monopolized.

The Applicant has not satisfied requirements for well-known mark protection.

Holding

The Ass. Registrar applied the test for likelihood of confusion from Pianotist Co’s Application (1906) and Sabel BV v Puma AG (1997), which requires a global appreciation of visual, aural, and conceptual similarities, considering the average consumer’s perception.

The Ass Registrar noted:

Visual Similarity

The Applicant’s mark features a stylized “FOUR STAR” with a half-zebra image and the word “ZEBRA” in red, while the Respondent’s mark prominently displays a full zebra and the word “ZEBRA” in blue. Despite differences in secondary elements (e.g., “FOUR STAR” vs. “BLACK”), the dominant element in both marks is “ZEBRA” accompanied by a zebra image.

Aural Similarity

The word “ZEBRA” is the central verbal element in both marks, likely to be the primary reference point for consumers.

Conceptual Similarity

Both marks evoke the concept of a zebra, reinforced by their imagery, creating a strong risk of association.

Consumer Behavior

The average consumer of alcoholic beverages, often making quick purchasing decisions in settings like bars or supermarkets, is unlikely to distinguish subtle differences, relying instead on the dominant “ZEBRA” element. This increases the likelihood of confusion, where consumers may assume the products originate from the same or related sources.

Goods and Trade Channels

The Ass Registrar found that the goods in Classes 32 and 33 (alcoholic and non-alcoholic beverages) are closely related, as they are sold through similar channels (e.g., liquor stores, supermarkets) and target the same consumer base. Citing British Sugar plc v James Robertson & Sons Ltd (1996), the Registrar emphasized that similarity in goods and trade channels heightens the risk of confusion.

The Ass Registrar concluded that the “BLACK ZEBRA” marks were confusingly similar to the Applicant’s prior registered “FOUR STAR ZEBRA” mark under Section 25. Their registration in 2021 was therefore erroneous, constituting an entry “wrongly remaining on the Register” under Section 88.2.

Was the Respondent’s Mark Filed in Bad Faith?

Bad faith, synonymous with fraud under Ugandan law, must be specifically pleaded with particulars, as per Fredrick Zaabwe v Orient Bank (2006) and Kyamugisha v Mutungo Executive Hotel Ltd (2025). It includes dishonesty or conduct falling short of acceptable commercial standards (Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd, 1999).

The Applicant raised bad faith in its submissions but failed to plead it specifically in its application or provide particulars. The Ass Registrar struck out the bad faith arguments as a departure from pleadings, citing Byamukama v Kompaire (2021) and Acaa Bilentina v Okello Michael (2015), which prohibit introducing new claims not raised in the original pleadings.

The issue of bad faith was not considered due to procedural deficiencies.

Should the Applicant’s Mark Be Removed for Non-Use?

Section 46 of the Trademarks Act allows removal of a mark for non-use if there has been no bona fide use for three years or more. Regulation 71 requires such applications to be filed separately on Form TM 37 with a statement of facts.

The Respondent raised non-use of the Applicant’s mark in its counterstatement, but no separate application under Section 46 was filed. The Ass Registrar held that non-use claims require a distinct application with specific evidence, which was not presented in these proceedings.

The Ass Registrar declined to determine this issue, as it fell outside the scope of the current application.

Does the Respondent’s Use of the Impugned Mark Constitute Infringement?

Section 88 governs rectification of the Register, but disputes over trademark use in the market (e.g., infringement or passing off) fall under the High Court’s jurisdiction, as per Sections 34 and 35 of the Trademarks Act and Megha Industries (U) Ltd v Royal Mabati Uganda Ltd (2024).

The Applicant claimed that the Respondent was using a mark in the market that differed from its registered “BLACK ZEBRA” marks and closely resembled the Applicant’s mark, causing confusion and revenue loss.Respondent’s Arguments:

The Respondent denied these claims, asserting that its market use aligned with the registered marks.

The Ass Registrar found that it lacked jurisdiction to adjudicate claims of infringement or passing off, as these involve the use of marks in commerce rather than their registration status. Such disputes must be pursued in the High Court under Section

The issue of infringement was dismissed for lack of jurisdiction.

Remedies Available

Having determined that the “BLACK ZEBRA” marks were registered in error due to their confusing similarity with the Applicant’s prior mark, the Ass Registrar granted the Applicant’s request for rectification.

Order

The Register was rectified by removing trademark numbers UG/T/2020/068855 and UG/T/2020/068856 “BLACK ZEBRA” in Classes 33 and 32.
Each party was ordered to bear its own costs.

Key Principles

Where competing marks share a strong dominant feature (here, the word/image “ZEBRA”), confusion is likely despite differences in minor elements.
Consumers in the alcoholic beverages market rely on imperfect recollection; side-by-side analysis is inappropriate.
Arguments on infringement or bad faith cannot be raised in submissions if not pleaded.
Registrar’s Powers under Section 88
Registration in error includes instances where a confusingly similar mark is admitted onto the Register.

✅ Takeaway for Brand Owners

When developing and protecting trademarks, focus on the dominant and distinctive elements of your brand. Register early, monitor competing applications, and ensure pleadings are precise, especially when alleging bad faith or infringement.

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