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J.B. Chemicals & Pharmaceuticals Ltd v Glaxo Group Ltd [2006] UGSC 17

Supreme Court · 2006 Appeal Dismissed ✦ AI-generated summary ↓ Download
Jurisdiction
Uganda
Case Type
Second appeal from a Court of Appeal decision in a trademark registration opposition originating before the Assistant Registrar of Trademarks
Decision
Appeal dismissed; Court of Appeal orders upheld and registration of "Rantac" refused

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Holding

The Supreme Court held the appeal was a second appeal because the Assistant Registrar of Trademarks sits as an administrative tribunal, the High Court hearing a reference from the Registrar acts as a court of first instance, and the appeal to the Court of Appeal was therefore a first appeal. On the merits, the Court found "Rantac" almost identical to the registered mark "Zantac" and likely to cause confusion or deception under s.14(1) of the Trademarks Act. The applicant for registration bore the burden of disproving confusion and failed. The Court of Appeal was right to reverse the High Court and Registrar. Appeal dismissed with costs.

Facts

The respondent, Glaxo Group Ltd, was the registered proprietor of the trademark "Zantac", registered in Uganda on 14 February 1979 and first used in 1981 for pharmaceutical, medicinal and veterinary preparations. On 24 November 1996 the appellant applied to register "Rantac" for pharmaceuticals, medicines, dental preparations and disinfectants. The application was advertised in the Uganda Gazette of 7 February 1997, and the respondent opposed it on grounds including that the marks were effectively identical and likely to cause confusion. The Assistant Registrar of Trademarks allowed the appellant's application, influenced by an agreement between the parties in India concerning the mark "Zinetac" and by a Russian Appellate Chambers decision. The respondent's challenge to the High Court was dismissed, but the Court of Appeal reversed both decisions, finding the marks differed only by one letter and were likely to confuse. The appellant appealed to the Supreme Court.

Issues

  1. Whether the appeal was a second or third appeal, and consequently whether the Supreme Court had jurisdiction to hear it without leave.
  2. Whether the registration of the trademark "Rantac" had a strong likelihood of causing confusion or deception with the registered trademark "Zantac".
  3. Whether there existed special circumstances justifying the exercise of the Registrar's discretion to allow registration of "Rantac".
  4. Whether the appellant discharged the burden of disproving confusion or deception.

Orders

  • Appeal dismissed with costs to the respondent in this Court, in the courts below, and in the Assistant Registrar's office.
  • Orders of the Court of Appeal upheld.

Key headnotes

Trademarks — Registration — Likelihood of confusion or deception
A trademark that is identical with, or so nearly resembles, a trademark already on the register belonging to a different proprietor in respect of the same goods as to be likely to deceive or cause confusion shall not be registered under section 14(1) of the Trademarks Act.
Trademarks — Opposition — Burden of proof on applicant
An applicant seeking registration of a trademark bears the burden of disproving the elements of confusion and deception where opposition raises a resembling registered mark.
Appeals — Nature of proceedings from the Registrar of Trademarks
The Assistant Registrar of Trademarks sits as an administrative tribunal rather than a court; a reference from the Registrar to the High Court is instituted as a special suit, so the appeal to the Court of Appeal is a first appeal and the further appeal to the Supreme Court is a second appeal triable as of right.
Appeals from administrative tribunals — Rehearing de novo
Where an appeal from an administrative body is unrestricted in its terms, the court may hear all the evidence afresh and substitute its own decision for that of the administrative body.
Practice — Content and length of record and written arguments
Written arguments must comply with the Chief Justice's Practice Direction limiting their length, and the record of appeal under rule 82 must not be cluttered with unauthorised material such as whole judgments and textbook extracts relied on by counsel below.

Legislation cited (8)

  • Civil Procedure Act s.2
  • Civil Procedure Act s.66
  • Trademarks Act (Cap.217) s.14(1)
  • Trademarks Act (Cap.217) s.51
  • Expropriated Properties Act s.15
  • Trademarks Rules (S.I. 83-2) r.116
  • Rules of the Supreme Court r.82
  • Rules of the Supreme Court r.93

Cases cited (3)

  • London Overseas Co v Raleigh Cycle (1959) EA 1012
  • Zeneca Ltd v Vivi Enterprises (HCCS No. 842 of 1994)
  • Kenya Aluminium and Industrial Works Ltd v The Minister for Agriculture [1961] EA 248
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.