Wakilii

Arcadian Tobacco Co. Ltd v John Sinclair Ltd (C.A. 5-1932.)

East African Court of Justice · [1933] EACJ 1 · 1933 Appeal Allowed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Appeal from Supreme Court order allowing dual registration of identical trade marks with conditions
Decision
Appellants' trade mark registration to proceed without modification; respondents' mark to be expunged from register

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Court held that the appellants were entitled to register the 'Tatler' trade mark in Kenya. Registration could not be refused on grounds of calculated deception where, at the date of application, no conflicting mark existed on the Kenya register and the respondents had not marketed goods under that mark in Kenya. Foreign user alone does not bar registration. Exclusive trade mark rights cannot be vested in two entities with conflicting interests in the same jurisdiction. The lower court's order for dual registration with conditions was set aside.

Outcome

Appellants' trade mark registration to proceed without modification; respondents' mark to be expunged from register

Facts

Both parties applied to register the word 'Tatler' as a trade mark for cigarettes in Kenya. The appellants (Arcadian Tobacco Co.) had registered their mark in India in 1923 and began marketing in India. The respondents (John Sinclair Ltd) claimed rights through assignment from Carreras Ltd, which had registered the mark in England in 1923. On 23 August 1930, the appellants' agent received Indian Tatler cigarettes for the Kenya market. On 27 August 1930, the appellants filed their application for registration in Kenya. The respondents filed notice of opposition on 16 February 1931, claiming exclusive proprietorship. At the date of the appellants' application, no Tatler mark existed on the Kenya register and no Tatler cigarettes had been sold in Kenya. The Supreme Court ordered dual registration with conditions distinguishing the packaging. The respondents' claim to title by assignment was later declared invalid by the English Court of Appeal.

Issues

  1. Whether the registration of the word 'Tatler' as a trade mark by the appellants should be refused on the ground that it is calculated to deceive the public in Kenya.
  2. Whether two different entities can hold exclusive rights in identical or substantially similar trade marks in the same jurisdiction.
  3. Whether user of a trade mark in foreign markets (England and elsewhere) by the respondents should prevent registration of a similar mark in Kenya by the appellants.
  4. Whether the date of application for registration or the date of opposition is the relevant date for assessing likelihood of deception.

Orders

  • Appeal allowed.
  • Registrar directed to proceed with registration of the appellants' trade mark without modification or limitation.
  • Opponents' mark to be removed from the Register.
  • Appellants awarded costs of the appeal and costs in the Supreme Court.
  • Opponents' cross-appeal dismissed with costs.

Rules and key headnotes

Trade Marks — Registration — Calculated to Deceive Test — Relevant Market
In determining whether a trade mark is calculated to deceive under section 9(1) of the Registration of Trade Marks Ordinance, regard must be had only to the market of the country in which registration is sought; foreign markets are wholly irrelevant unless goods bearing the foreign mark have been sold in the local market in such a way as to become identified with the foreign manufacturer.
Trade Marks — Registration — Exclusive Rights — Conflicting Interests
Although the public may not be deceived by the registration of a distinctive mark by two different business concerns, such registration connotes an exclusive right which cannot be vested in two entities having conflicting interests in the same jurisdiction.
Trade Marks — Opposition — Date for Assessment
The relevant date for determining whether a trade mark is calculated to deceive is the date on which the application for registration was made, not the date of opposition or any subsequent date.
Trade Marks — Honest Concurrent User — Requirements
Honest concurrent user within the meaning of section 22 of the Registration of Trade Marks Ordinance requires proof of actual contemporaneous use in the jurisdiction where registration is sought; mere intention to use or user in foreign jurisdictions does not constitute concurrent user.
Trade Marks — Registrar's Acceptance — Weight
The acceptance of a mark for registration by the Registrar carries considerable weight in determining whether the mark should be registered, as it indicates prima facie that the mark meets the statutory requirements.
Trade Marks — Foreign Registration — Effect in Local Jurisdiction
Registration of a trade mark in a foreign jurisdiction, even if coupled with extensive foreign user, does not in itself prevent registration of the same or similar mark by another party in Kenya where the foreign mark has not been used or become known in the Kenyan market.

Legislation cited (7)

  • Registration of Trade Marks Ordinance Cap. 89 s.7(5)
  • Registration of Trade Marks Ordinance Cap. 89 s.9(1)
  • Registration of Trade Marks Ordinance Cap. 89 s.12
  • Registration of Trade Marks Ordinance Cap. 89 s.13
  • Registration of Trade Marks Ordinance Cap. 89 s.22
  • Registration of Trade Marks Ordinance Cap. 89 s.42
  • Trade Marks Act 1905 s.13

Cases cited (14)

  • In re Trade Mark of John Dewhurst and Sons Ltd (1896) 2 Ch 137
  • Lawson v. The Bank of London. 25 L.J.C.P. 188
  • Maxwell v. Hogg, 36 L.J. (Equity) 433 at 436
  • In re Powell's Trade Mark (1893) 2 Ch 388
  • In re Trade Mark of La Societe Anonyme Des Verreries De L'Etoile (1894) 2 Ch 26
  • James Crossley Sons v. William George Dunn, 45 A.C. 252
  • In re Royal Worcester Corset Company's Application (1909) 1 Ch 419
  • In re Ehrmann's Application (1897) 2 Ch 495
  • Notox Ltd v Inecto Inc (1931) 48 RPC 168
  • Impex Electrical Ltd v Weinbaum (1927) 44 RPC 405
  • Boord and Son v Bagots Hutton and Co Ltd [1916] 2 AC 382
  • In re Havana Commercial Company (1916) 33 RPC 399
  • Eno v Dunn (1890) 15 AC 252
  • Poiret v Jules Poiret Ltd (1920) 37 RPC 177

Full judgment

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Arcadian Tobacco Co. Ltd v John Sinclair Ltd (C.A. 5-1932.) [1933] EACJ 1 (1 January 1933)
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.