Glaxo Group Ltd v J.B. Chemicals & Pharmaceutical Ltd (Civil Appeal No. 68 of 2002)

Court of Appeal · [2004] UGCA 5 · 2004 Appeal Allowed ✦ AI-generated summary ↓ Download

Jurisdiction

Uganda

Case Type

Second appeal in a trademark registration objection, from the High Court's dismissal of an appeal against the Assistant Registrar of Trademarks

Decision

Appeal allowed; registration of 'Rantac' refused and the Registrar directed not to register it

The full judgment

Read the complete, verbatim text of this judgment.

Cited — treatment unverified cited in 1 (treatment unverified) Derived from citing cases in the Wakilii corpus — not an assertion that this case is good law.

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Holding

The Court of Appeal allowed Glaxo's appeal against registration of the trademark 'Rantac'. The Assistant Registrar breached natural justice by admitting a late affidavit and denying the appellant a right of reply. The India co-existence agreement was wrongly interpreted as an admission of no confusion, given that different conditions applied in India and Glaxo used the name 'Zinetac' there, not 'Zantac'. The words 'Zantac' and 'Rantac' differ by only one letter, creating a strong likelihood of confusion or deception. No special circumstances under section 15(2) justified registration, since 'Rantac' was unknown in Uganda. The High Court judgment and Registrar's ruling were set aside.

Facts

Glaxo Group Ltd was the registered proprietor of the trademark 'Zantac' (registration number 15080, class 5), validly registered in Uganda on 14 February 1979 for pharmaceutical preparations, and used in Uganda from 1981. In 1997, over fifteen years later, J.B. Chemicals & Pharmaceutical Ltd applied to register 'Rantac' in class 5. Glaxo objected before the Registrar of Trademarks, contending that 'Rantac' was effectively identical to 'Zantac' and likely to cause confusion contrary to sections 14 and 15 of the Trademarks Act. During proceedings, the respondent filed an affidavit out of time and the appellant was denied an opportunity to reply. The parties had earlier entered an agreement in India (3 April 1992) settling disputes, where the two marks co-existed; in India Glaxo sold ranitidine products under 'Zinetac', not 'Zantac'. The Assistant Registrar overruled the objection, relying on the India co-existence and her discretion under section 15(2), and the High Court dismissed Glaxo's appeal.

Issues

Whether the Assistant Registrar violated the rules of natural justice by admitting a late-filed affidavit and denying the appellant an opportunity to reply.
Whether the agreement between the parties in India amounted to an admission that the two trademarks were not confusingly or deceptively similar.
Whether the trademark 'Rantac' so nearly resembles 'Zantac' as to be likely to deceive or cause confusion under sections 14 and 15 of the Trademarks Act.
Whether there were special circumstances justifying registration of an identical or near-identical trademark under section 15(2) of the Trademarks Act.

Orders

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

Key headnotes

Natural Justice — Audi Alteram Partem — Admission of Late Affidavit Without Right of Reply

A registrar or quasi-judicial body who admits a document filed out of time after the close of pleadings and relies on it to reject a party's objection, without affording that party an opportunity to reply or comment, violates the rule of natural justice that no one should be condemned unheard.

Trademarks — Likelihood of Confusion — Near-Identical Marks

Where two trademarks for the same class of goods differ by only one letter with the remaining syllables identical, the likelihood of causing confusion or deception is strong, and registration of the later mark offends sections 14 and 15 of the Trademarks Act.

Trademarks — Foreign Co-existence Agreement — Whether an Admission of No Confusion

A foreign agreement permitting two trademarks to co-exist does not amount to an admission that the marks are not confusingly or deceptively similar where the conditions and circumstances in the foreign jurisdiction differ from the local jurisdiction and the proprietor used a different trade name there.

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

The discretion to permit registration of identical or near-identical trademarks under section 15(2) of the Trademarks Act requires genuine special circumstances; a foreign co-existence and absence of proven consumer confusion are insufficient where the later mark was never used or known in the local market, making proof of confusion impossible.

Trademarks — Foreign Tribunal Decisions — Persuasive Value Under Section 49

Decisions of foreign trademark authorities are not binding but may be admitted and considered for guidance under section 49 of the Trademarks Act, which permits evidence of trade usage and relevant marks used by other persons.

Legislation cited (5)

Trademarks Act s.14
Trademarks Act s.15(1)
Trademarks Act s.15(2)
Trademarks Act s.49
Rules of the Court of Appeal rule 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.