Wakilii

East African Roofing Systems Limited v Metal Wood Industries Limited (Trademark Application 72822 of 2021)

Tribunal · [2024] UGRSB 2 · 2024 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark registration applications before the Assistant Registrar of Trademarks
Decision
Trademark applications allowed to proceed to registration; oppositions dismissed

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Registrar dismissed the opposition. The opponent's marks and the applicant's marks were visually and phonetically dissimilar, precluding any likelihood of confusion. The opponent's complaint concerned the applicant's market presentation and trade dress, not the marks as applied for registration. Such disputes about market use and passing off fall outside the Registrar's subject matter jurisdiction under the Trademarks Act and must be pursued in the High Court under section 35.

Outcome

Trademark applications allowed to proceed to registration; oppositions dismissed

Facts

Metal Wood Industries Limited applied to register the word CROCODILE and a crocodile device as trademarks in classes 6 and 12. East African Roofing Systems Limited, holder of registered trademarks for RED TIGER and GREY TIGER with tiger devices in class 6, opposed the applications. Two other companies initially opposed but settled. The opponent did not allege similarity between the marks themselves but contended that the applicant's use of red and black background colours in the market resembled the opponent's trade dress and was likely to confuse customers. The opponent admitted the marks were not similar but argued the market presentation amounted to bad faith.

Issues

  1. Whether the opponent raised credible grounds under the Trademarks Act to oppose registration of the applicant's trademark applications.
  2. Whether the Registrar of Trademarks has jurisdiction to determine disputes concerning the manner in which trademarks are used in the market and allegations of passing off.

Orders

  • Oppositions to trademark applications No. 072822 and 074619 dismissed.
  • No order as to costs.

Rules and key headnotes

Trademark Opposition — Grounds for Opposition — Similarity and Likelihood of Confusion
Likelihood of confusion in trademark opposition proceedings is inextricably linked to similarity of marks and goods; where there is no alleged similarity of the marks themselves, a discussion on likelihood of confusion serves no purpose and cannot ground an opposition.
Trademark Opposition — Statutory Grounds — Trademarks Act Section 12
An opposition to trademark registration under section 12 of the Trademarks Act must be supported by credible grounds based on the Act, including lack of distinctiveness under section 9, prohibition under section 23, similarity likely to cause confusion under section 25, or conflict with a mark registered in the country of origin under section 44.
Trademark Opposition — Bad Faith — Pleading and Proof
Bad faith must be particularly pleaded and proved in trademark opposition proceedings; it is not plausible that bad faith can arise where the disputed marks have no resemblance so as to be likely to cause confusion.
Jurisdiction of Registrar of Trademarks — Subject Matter Jurisdiction — Market Use and Passing Off
The Registrar of Trademarks has no jurisdiction to determine disputes concerning the manner in which trademarks are used in the market or allegations of passing off; such actions must be pursued in the High Court under section 35 of the Trademarks Act.
Jurisdiction — Scope of Registrar's Inquiry in Opposition Proceedings
In opposition proceedings, the Registrar's scope of inquiry is limited to circumstances that can prohibit registration of a trademark under the Act, including lack of distinctiveness, prohibition on registration of identical or resembling marks, marks contrary to law or likely to deceive, prohibited marks under the regulations, concurrent use, and marks registered in the country of origin.
Jurisdiction — Nature and Limits — Ultra Vires Acts
Jurisdiction is a creature of statute and cannot be conferred by consent, complacency of the parties, or acquiescence of the hearing officer; exercising jurisdiction not conferred by statute is a usurpation of powers and an act done ultra vires, rendering any decision null and void.
Trademark Opposition — Assessment of Registrability — Mark as Applied For
In determining oppositions, the Registrar is limited to assessing the trademark as it is presented in the application and determining whether it is registrable; questions as to the manner in which the applicant presents its trademark in the market are outside the scope of inquiry.

Legislation cited (14)

Cases cited (4)

  • Megha Industries U ltd v Royal Mabaati Uganda Ltd Application for cancellation of trademark No.05981
  • Owners of the Motor Vessel Lillian S v Caltex Oil (Kenya) Ltd [1989] KLR 1
  • Ozuu Brothers Enterprises v Ayikoru (Civil Revision No. 2 of 2016)
  • A.G of Lagos State v Dosunmu (1989) 3 NWLR pt.111, pg. 552 S C

Full judgment

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

East African Roofing Systems Limited v Metal Wood Industries Limited (Trademark Application 72822 of 2021) 2024 UGRSB 2 (7 February 2024)
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.