Wakilii

In the matter of an Application for cancellation of registration by WM Wrigley JR Company (Trademark Application 32776 of 2012)

Tribunal · [2017] UGRSB 1 · 2017 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of trademark registration under section 88 of the Trademarks Act 2010
Decision
Trademark registration number 32776 'BIG U' expunged 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 Applicant was an aggrieved person with standing to seek cancellation. The mark 'BIG U' visually and conceptually resembled the Applicant's earlier registered 'BIG G' marks, particularly TM 24180 and TM 16868. TM 16868 was registered for identical goods in class 30. Under section 25 of the Trademarks Act 2010, a trademark shall not be registered if it nearly resembles a trademark belonging to a different owner already on the register for the same goods. The registration of 'BIG U' was therefore an entry wrongly remaining on the register and was ordered expunged.

Outcome

Trademark registration number 32776 'BIG U' expunged from the register

Facts

WM Wrigley Jr Company applied on 17 July 2012 to expunge trademark number 32776 'BIG U' from the register on grounds that it resembled their earlier registered 'BIG G' trademarks and was likely to deceive or cause confusion. The 'BIG U' mark was registered on 30 December 2009 in the names of Naman Enterprises Ltd for goods in class 30 (coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour, spices, ice). Naman Enterprises assigned the mark to Moyoni International Ltd on 10 August 2010. The Applicant was the registered proprietor of four 'BIG G' marks in class 30, including TM 24180 (stylized 'BIG G' for confectionery including chewing gum, registered 13 June 2001) and TM 16868 ('BIG G' logo for goods identical to those covered by 'BIG U', registered 19 July 1988). The Respondent failed to file a counterstatement or appear at the hearing despite proper service.

Issues

  1. Whether the Applicant is an aggrieved person entitled to apply for cancellation of the trademark registration.
  2. Whether trademark registration number 32776 'BIG U' was validly registered.
  3. Whether the mark 'BIG U' is distinctive.
  4. Whether the mark 'BIG U' resembles the Applicant's earlier registered 'BIG G' marks and is likely to cause confusion.
  5. Whether the mark 'BIG U' was registered for the same goods or the same description of goods as the Applicant's earlier marks.

Orders

  • The Register shall be rectified by expunging trademark registration number 32776 'BIG U' registered to Moyoni International Ltd from the Register of Trademarks in Uganda.
  • The Respondent shall bear the costs of these proceedings.

Rules and key headnotes

Trademarks — Cancellation — Aggrieved Person — Standing
The expression 'aggrieved person' in section 88 of the Trademarks Act 2010 has no special or technical meaning and is to be liberally construed. It embraces any person having a real interest in having the register rectified and includes any person who would be, or in respect of whom there is a reasonable possibility of being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified.
Trademarks — Validity of Registration — Prima Facie Evidence
Under section 45 of the Trademarks Act cap 217 (continued in force by section 99(2) of the Trademarks Act 2010), the fact that a person is registered as proprietor of a trademark is prima facie evidence of the validity of the original registration and of all subsequent assignments and transmissions. A registered trademark is valid until proven otherwise, and the onus is on the party challenging validity to prove invalidity.
Trademarks — Distinctiveness — Assessment
Distinctiveness under section 9(2)(a) of the Trademarks Act 2010 must be assessed first by reference to the goods or services for which the mark is registered and secondly by reference to the perception of the relevant public, which consists of average consumers of the products in issue who are reasonably well informed, reasonably observant, and circumspect.
Trademarks — Resemblance — Visual and Conceptual Similarity
In determining whether two trademarks resemble each other, both visual and conceptual similarity must be considered. Where marks share strong conceptual resemblance and overall appearance, minor differences in colour or individual letters do not make the marks sufficiently different in the eyes of a reasonable consumer.
Trademarks — Section 25 — Same Description of Goods
Under section 25(1) of the Trademarks Act 2010, a trademark shall not be registered if it is identical with or nearly resembles a trademark belonging to a different owner already on the register for the same goods or the same description of goods. In determining whether goods are of the same description, regard is had to the nature and composition of the goods, their respective uses and functions, and the trade channels through which they are marketed or sold. The phrase 'goods of the same description' ought not to be given too restrictive a construction.
Trademarks — Comparison of Marks — Surrounding Circumstances
In comparing two trademarks, the marks must be judged by their look and sound. The goods to which they are applied, the nature and kind of customer likely to buy those goods, and all surrounding circumstances must be considered, including what is likely to happen if each trademark is used in a normal way for the goods of the respective owners.
Trademarks — Rectification of Register — Entry Wrongly Remaining
Where a trademark nearly resembles an earlier registered mark belonging to a different owner and is registered for identical goods in the same class, it is an entry wrongly remaining on the register contrary to section 25 of the Trademarks Act 2010. The Registrar has power under section 88 to rectify the register by expunging such an entry.

Legislation cited (10)

Cases cited (5)

  • Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
  • Koninklijke KPN Nederland (2004) ECR I-1619
  • Prichard & Constance (wholesale) Ltd v Amata Ltd and Others (1925) 42 RPC 63
  • J Lyons & Coy Ltd's Application (Hostess) (1959) RPC 120
  • Pianotist Co Ltd (23 RPC 77)

Full judgment

↓ Download PDF

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

In the matter of an Application for cancellation of registration by WM Wrigley JR Company (Trademark Application 32776 of 2012) 2017 UGRSB 1 (14 February 2017)
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.