Wakilii

Four Star Beverages Limited v Prime Care International Limited (Trademark No.S UG T 2020 068855; Trademark No.S UG T 2020 068856)

Tribunal · [2025] UGRSB 22 · 2025 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Consolidated application for cancellation of registered trademarks before the Registrar of Trademarks
Decision
Respondent's trademarks cancelled and removed from the Register

Observed later treatment

No later-treatment classification is recorded for this judgment.

Citator coverage is limited to judgments in the Wakilii corpus and source-matched treatment records. Absence of a signal is not an assertion that the case remains good law.

AI-generated summary. This summary was generated by AI from the full text of the judgment. It may contain errors or omissions—always read the source judgment before relying on it.

Holding

Held that the Respondent's trademarks "BLACK ZEBRA" (Nos. 68855 and 68856) were registered in error as they are confusingly similar to the Applicant's prior registered mark "FOUR STAR ZEBRA" (No. 049445). Both marks prominently feature the word "ZEBRA" as the dominant verbal element reinforced by a zebra image, and cover similar goods in Classes 32 and 33 (alcoholic and non-alcoholic beverages). The average consumer would likely assume the products originate from the same source. The Respondent's marks were ordered removed from the Register. The Registrar declined jurisdiction over infringement and bad faith claims, which must be pursued in the High Court.

Outcome

Respondent's trademarks cancelled and removed from the Register

Facts

Four Star Beverages Limited applied for cancellation of Prime Care International Limited's trademarks "BLACK ZEBRA" (Nos. 68855 and 68856) registered on 14 June 2021 in Classes 32 and 33. The Applicant owns a prior registered mark "FOUR STAR ZEBRA" (No. 049445) registered on 18 August 2014 in Class 33. The Applicant contended that the Respondent's marks are confusingly similar and likely to deceive consumers and dilute the reputation of its established brand. The Respondent argued that the marks are sufficiently different, that "ZEBRA" is a common word not eligible for exclusive protection, and that the Applicant cannot rely on reputation without satisfying the statutory conditions for well-known mark protection. The matter was heard on 5 November 2024 with both parties filing written submissions.

Issues

  1. Whether the Respondent's mark was registered in error?
  2. Whether the Respondent's mark was filed in bad faith?
  3. Whether the Applicant's mark should be removed from the Register on the ground of non-use?
  4. Whether the Respondent's use of the impugned mark on its products amounts to infringement of the Applicant's registered mark?

Orders

  • The Register is rectified by the removal of trademark numbers 68855 and 68856 "BLACK ZEBRA" in Classes 33 and 32 in the name of Prime Care International Limited.
  • Each party shall bear its own costs.

Rules and key headnotes

Trademarks — Confusing Similarity — Test for Likelihood of Confusion
When assessing whether two trademarks are confusingly similar, the marks must be judged by their look and sound, considering the goods to which they are applied, the nature and kind of customer likely to buy those goods, and all surrounding circumstances including what is likely to happen if each trademark is used in a normal way by the respective owners. If there will be confusion in the minds of the public which will lead to confusion in the goods, registration must be refused.
Trademarks — Overall Impression — Dominant and Distinctive Elements
The global appreciation of likelihood of confusion must be based on the overall impression created by the marks, bearing in mind their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The perception of marks in the mind of the average consumer plays a decisive role in the global appreciation of likelihood of confusion.
Trademarks — Imperfect Recollection — Average Consumer Test
The average consumer only rarely has the chance to make a direct comparison between different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. The average consumer's level of attention is likely to vary according to the category of goods or services in question.
Trademarks — Similarity of Goods — Factors for Assessment
In assessing similarity of goods or services, the key factors include: the purpose for which the goods or services are used; the respective users; the physical nature of the goods; the channels through which the goods are marketed and distributed; the location of goods in retail settings; and the extent to which the goods compete with each other. Similarity of goods and trade channels significantly increases the risk that consumers will assume a common commercial origin when faced with marks bearing the same dominant element.
Trademarks — Rectification — Registration in Error under Section 88
Registration of a trademark in error arises where, from the outset, the mark ought not to have been admitted to the Register. Where a trademark is found to be confusingly similar within the meaning of Section 25 of the Trademarks Act, its entry on the Register constitutes an error, given the express statutory prohibition against the registration of such marks, and amounts to an entry wrongly remaining on the register within the meaning of Section 88.
Trademarks — Bad Faith — Requirement to Plead with Particulars
Bad faith and fraud are synonymous and must be specifically pleaded and proved with particulars. A party raising a claim of bad faith must specifically plead it with dates and particulars in the pleadings. Raising the issue of bad faith in submissions without pleading it constitutes a departure from pleadings and will be struck out.
Trademarks — Registrar's Jurisdiction — Infringement and Passing Off
The Registrar's jurisdiction is primarily confined to matters concerning registration, including examination and registration of applications on absolute or relative grounds, and objections to registration by way of opposition or rectification. Disputes concerning infringement and passing off fall outside the Registrar's jurisdiction and must be pursued in the High Court. The Registrar has no authority to determine whether the manner in which one trademark owner uses its trademark infringes another's rights.

Legislation cited (27)

Cases cited (19)

  • Pianotist Co's Application (1906) 23 RPC 774
  • Sabel BV v Puma AG, Rudolf Dassler Sport (1997) C-251/95
  • Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690
  • British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
  • Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265
  • Ritz Hotel Ltd v Charles of The Ritz Ltd (1988) 15 NSWLR 158
  • Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367
  • Fredrick Zaabwe v Orient Bank and 5 Others (Supreme Court Civil Appeal No. 4 of 2006)
  • Robert Mwesigwa and 134 Others v Bank of Uganda (High Court Civil Suit No. 588 of 2003)
  • Kyamugisha v Mutungo Executive Hotel Ltd v Uganda Revenue Authority (Civil Suit No. 285 of 2019)
  • Byamukama and Another v Kompaire (Civil Appeal No. 42 of 2021)
  • Acaa Bilentina v Okello Michael (High Court Civil Appeal No. 53 of 2015)
  • Waghorn v George Wimpey & Co [1969] 1 WLR 1764
  • Interfreight Forwarders (U) Ltd v East African Development Bank (Supreme Court Civil Appeal No. 33 of 1993)
  • Captain Harry Gandy v Caspair Air Charter Ltd (1956) 23 EACA 139
  • URA v Rabbo Enterprise (U) Ltd and Another (Supreme Court Civil Appeal No. 12 of 2004)
  • Owners of the Motor Vessel Lillian S v Caltex Oil (Kenya) Ltd 1989 KLR 1
  • Megha Industries (U) Ltd v Royal Mabati Uganda Ltd (Trademark Application No. 59819 of 2017)
  • Gut Springenheide and Tusky (Case C-210/96) [1998] ECR I-4657

Full judgment

↓ Download PDF

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

Four Star Beverages Limited v Prime Care International Limited (Trademark No.S UG T 2020 068855; Trademark No.S UG T 2020 068856) [2025] UGRSB 22 (12 September 2025)
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.