Wakilii

Akso Nobel Coatings International BV v Kansai Plascon Uganda Limited (Trademark Registration 59228 of 2018)

Tribunal · [2019] UGRSB 2 · 2019 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of trademark registration before the Registrar of Trademarks
Decision
Trademark registration cancelled and expunged from the register

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that the validity of trademark No. 59228 was not pending before the High Court and the Registrar had jurisdiction to determine the cancellation application. The Applicant, as proprietor of an earlier similar mark, was an aggrieved person. Registration of trademark No. 59228 'WEATHERGUARD' violated section 25 of the Trademarks Act 2010 because it nearly resembled the Applicant's earlier registered mark No. 25166 for the same goods. The Respondent failed to establish any statutory exception permitting the later registration. Order made expunging trademark No. 59228 from the register.

Outcome

Trademark registration cancelled and expunged from the register

Facts

On 4 May 2018, the mark 'WEATHERGUARD' was registered as trademark No. 59228 in class 2 in the names of Akzo Nobel Coatings International BV (Respondent) with effect from 14 July 2017. Kansai Plascon Uganda Limited (Applicant) had held an earlier registration of trademark No. 25166 'Weatherguard' since 18 November 2002 for the same class of goods. On 10 December 2018, the Applicant applied to the Registrar for cancellation of the Respondent's registration on grounds that it was unlawful. Two related High Court suits were pending between the parties concerning trademark infringement and passing off (HCCS 892/2017 and HCCS 918/2017), but neither suit directly challenged the validity of trademark No. 59228. The Respondent argued it had used the mark 'Sadolin Weatherguard' since 1 September 2010 under a licensing agreement with the Applicant's predecessors, but this usage post-dated the Applicant's 2002 registration.

Issues

  1. Whether the cancellation proceedings should be stayed pending determination of related High Court suits.
  2. Whether the Applicant is an aggrieved person entitled to apply for cancellation of the trademark registration.
  3. Whether the registration of trademark No. 59228 'WEATHERGUARD' was unlawful under section 25 of the Trademarks Act 2010.

Orders

  • Trademark No. 59228 'Weatherguard' in the names of Akzo Nobel Coatings International BV expunged from the register.
  • Costs of the proceedings awarded to the Applicant.

Rules and key headnotes

Trademarks — Cancellation of Registration — Lis Pendens Rule — Jurisdiction of Registrar
Where an applicant brings cancellation proceedings before the Registrar under section 88(1) of the Trademarks Act 2010, the Registrar retains jurisdiction unless an action concerning the specific trademark in question is pending in court under section 63(1). The validity of a trademark registration is not a pending question in court merely because related infringement or passing off suits between the same parties are ongoing if those suits do not directly challenge the validity of the registration in their pleadings.
Trademarks — Cancellation of Registration — Aggrieved Person — Locus Standi
A person aggrieved under section 88(1) of the Trademarks Act 2010 includes any person having a real interest in having the register rectified and who would be appreciably disadvantaged in a legal or practical sense by the register remaining unrectified. The proprietor of an earlier registered trademark for the same goods is an aggrieved person entitled to apply for cancellation of a later similar registration.
Trademarks — Registration — Prohibition Against Similar Marks — Section 25 Trademarks Act
Section 25(1) of the Trademarks Act 2010 prohibits registration of a trademark that is identical with or nearly resembles a trademark belonging to a different owner already on the register in respect of the same goods or description of goods. This prohibition is subject to statutory exceptions such as concurrent use under section 27 or vested interests under section 41. Where no statutory exception applies, registration of a resembling mark is invalid and the later registration must be expunged.
Trademarks — Vested Interests — Section 41 Trademarks Act — Prior Use
A respondent seeking to rely on vested interests under section 41 of the Trademarks Act 2010 to justify registration of a mark resembling an earlier registered mark must establish that it was using the mark prior to the registration or usage of the mark by the applicant. Use of a mark under a licensing agreement entered into after the applicant's registration does not constitute prior use sufficient to establish vested interests.

Legislation cited (5)

Cases cited (3)

  • Springs International Hotel Ltd v Hotel Diplomate Ltd and Another (High Court Civil Suit No. 227 of 2011)
  • Kabandize v KCCA (Supreme Court Civil Appeal No. 13 of 2014)
  • Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158

Full judgment

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The original judgment as reported. Read the original PDF before relying on any passage.

Akso Nobel Coatings International BV v Kansai Plascon Uganda Limited (Trademark Registration 59228 of 2018) 2019 UGRSB 2 (31 July 2019)
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.