Glaxo Group Limited v J.B Chemicals and Pharmaceutical Limited (Civil Appeal 68 of 2002)

Court of Appeal · [2004] UGCA 37 · 2004 Appeal Allowed ✦ AI-generated summary ↓ Download

Jurisdiction

Uganda

Case Type

Second appeal from a High Court decision upholding the Assistant Registrar of Trademarks' rejection of the appellant's objection to registration of a trademark

Decision

Appeal allowed; High Court judgment and Assistant Registrar's ruling set aside; Registrar directed not to register 'Rantac'

The full judgment

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Holding

The Court of Appeal allowed the appeal, holding that the Assistant Registrar violated natural justice (audi alteram partem) by admitting the respondent's late affidavit and denying the appellant an opportunity to reply. The agreement reached in India permitting co-existence of 'Zantac' and 'Rantac' could not be interpreted as an admission that the marks were not confusingly similar, given different conditions and the fact the appellant used 'Zinetac' in India. The marks 'Zantac' and 'Rantac' differed by only one letter, with identical remaining syllables, creating a strong likelihood of confusion. No special circumstances justified registration under Section 15(2). The Registrar was directed not to register 'Rantac'.

Facts

Glaxo Group Ltd was the registered proprietor of the trademark 'Zantac' (registration number 15080 in class 5), validly registered on 14 February 1979 for pharmaceutical, medicinal and veterinary preparations. 'Zantac' was first used in Uganda in 1981 and used on a massive scale worldwide. In February 1997, J.B. Chemicals and Pharmaceutical Ltd advertised an application to register 'Rantac' as its trademark in Uganda in class 5. Glaxo objected before the Registrar of Trademarks, contending the registration was contrary to Sections 14 and 15 of the Trademark Act because 'Rantac' was effectively identical to 'Zantac' and would cause confusion or deception. The Assistant Registrar admitted a late affidavit from the respondent without affording Glaxo an opportunity to reply, and relied on a prior agreement between the parties in India and a Russian trademark decision to permit co-existence. The objection was overruled and registration allowed. Glaxo's appeal to the High Court was dismissed before it appealed to the Court of Appeal.

Issues

Whether the Assistant Registrar erred in admitting late filing of the respondent's affidavit and denying the appellant an opportunity to reply, in breach of natural justice.
Whether the agreement between the parties reached in India amounted to an admission that the trademarks 'Zantac' and 'Rantac' were not confusingly or deceptively similar.
Whether the trademark 'Rantac' so nearly resembles the trademark 'Zantac' as to be likely to deceive or cause confusion under Sections 14 and 15 of the Trademark Act.
Whether special circumstances existed to justify the registrar's exercise of discretion under Section 15(2) to permit registration of identical or similar trademarks.

Orders

Appeal allowed with costs in this court and the courts below.
The judgement of the High Court and the Ruling of the Assistant Registrar of Trademarks are set aside together with their orders.
The Registrar of Trademarks is directed not to register 'Rantac' as a trademark under the Trademarks Act of Uganda.

Key headnotes

Natural Justice — Audi Alteram Partem — Admission of Evidence Without Opportunity to Reply

A registrar exercising quasi-judicial discretion who admits late-filed evidence and partially relies on it to determine a matter must afford the opposing party an opportunity to reply or comment; failure to do so violates the rule of natural justice that no person should be condemned unheard.

Trademarks — Likelihood of Confusion — Similarity of Marks

Where two trademarks differ only by a single letter and share identical remaining syllables, cover the same goods, and one has been in long-standing use, the likelihood of causing confusion or deception is strong, rendering registration of the later mark contrary to Sections 14 and 15 of the Trademark Act.

Trademarks — Foreign Co-existence Agreements — Limited Evidential Effect

An agreement permitting co-existence of trademarks in one country does not amount to an admission that the marks are not confusingly or deceptively similar in another country where the trading conditions, circumstances and the trade names actually used differ.

Trademarks — Honest Concurrent Use — Special Circumstances under Section 15(2)

A registrar may only permit registration of identical or nearly resembling trademarks under Section 15(2) of the Trademark Act where genuine special circumstances exist; the absence of consumer confusion evidence cannot constitute such a circumstance where the disputed mark was previously unknown in the country and not yet in use.

Memorandum of Appeal — Form — Compliance with Rule 85

Under Rule 85 of the Rules of the Court of Appeal, a memorandum of appeal must set forth concisely and under distinct heads, without argument or narrative, the grounds of objection to the decision appealed against.

Legislation cited (5)

Trademark Act s.14(1)
Trademark Act s.15(1)
Trademark Act s.15(2)
Trademark Act s.49
Rules of the Court of Appeal r.85

Cases cited (1)

Zeneca Ltd v Vivi Enterprises (Civil Suit No. 842 of 1994)

Source: this page presents Wakilii’s issue analysis and metadata for a publicly reported Ugandan judgment. Any AI-generated summary is marked as such. Judgment text is sourced from the Uganda Legal Information Institute (ulii.org). Wakilii is not affiliated with ULII.