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Industria De Diseno Textil, S.A v Zeregaber General Trading (U) Limited (Trademark Application 78755 of 2023)

Tribunal · [2025] UGRSB 40 · 2025 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark application by prior registered trademark owner
Decision
Opposition dismissed; applicant's trademark application allowed to proceed to registration

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that the applicant's mark 'ZARA GARDEN HOTEL AND APARTMENTS' with a distinctive green leaf device is not confusingly similar to the opponent's 'ZARA' and 'ZARA HOME' marks registered for clothing, leather goods, and home furnishings. The marks differ visually, phonetically, and conceptually, and the goods and services are dissimilar in nature, purpose, and trade channels. The opponent failed to establish that 'ZARA' is an invented word or that it is exceptionally well-known in Uganda through defensive registration under section 47 of the Trademarks Act. Opposition dismissed; applicant's mark to proceed to registration.

Outcome

Opposition dismissed; applicant's trademark application allowed to proceed to registration

Facts

On 27 March 2023, Zeregaber General Trading (U) Limited applied to register the trademark 'ZARA GARDEN HOTEL AND APARTMENTS' with a green leaf device in Class 43 for hotel and accommodation services. The mark was advertised in the URSB Journal on 12 May 2023. Industria De Diseno Textil, S.A, a Spanish company, filed opposition on 10 July 2023, claiming the applicant's mark incorporates and resembles its prior registered trademarks 'ZARA' (Classes 18, 25, 35) and 'ZARA HOME' (Classes 20, 21, 24), which are well-known globally and in Uganda. The opponent argued the applicant's mark would cause confusion and unfairly benefit from ZARA's reputation. The applicant countered that its mark is distinctive, used in good faith for entirely different services in Class 43, and that 'ZARA' is a common name of Arabic/Hebrew origin meaning 'blooming flower' or 'princess'. A hearing was held on 1 October 2024.

Issues

  1. Whether the Applicant's mark is confusingly similar to the Opponent's 'ZARA' trademark?
  2. Whether the Opponent's trademark is well known in Uganda?
  3. What remedies are available to the parties?

Orders

  • Opposition dismissed.
  • Applicant's mark shall proceed to be registered.
  • Each party to bear their own costs.

Rules and key headnotes

Trademarks — Confusing Similarity — Assessment of Marks and Goods/Services
In assessing whether two marks are confusingly similar under section 25 of the Trademarks Act, the tribunal must consider the marks by their look and sound, the nature of the goods or services, the type of customer likely to purchase them, and all surrounding circumstances, including whether confusion is likely to arise in the minds of the public when each mark is used in a normal way.
Trademarks — Dominant Elements — Visual Assessment
When comparing composite marks, greater weight is placed on the dominant and distinctive elements rather than on descriptive or visually insignificant components. The likelihood of confusion must be assessed based on the overall impression created by the marks, with particular regard to their dominant elements, as consumers generally retain an imperfect recollection and tend to remember the features that stand out most.
Trademarks — Invented Words — Definition and Test
For a mark to qualify as an invented word, it is not sufficient that it be newly coined; the word must, when considered on its own, convey no ordinary meaning to ordinary persons. A word will not be considered invented if it is traceable to a foreign source with established meaning, is a mere combination of two English words, or if the resulting expression communicates the same idea as a recognizable word in common usage.
Trademarks — Similarity of Goods and Services — Factors for Assessment
In assessing similarity of goods and services, relevant factors include the respective uses and users, the physical nature of the goods or acts of service, the trade channels through which they reach the market, the extent to which they are competitive or complementary, and whether consumers would believe they come from the same commercial source. Goods and services must be considered similar only where they are related in nature, purpose, trade channels, or consumer perception.
Trademarks — Well-Known Marks — Defensive Registration Requirement in Uganda
Under Uganda's registration-based trademark system, a trademark owner may only claim that their mark is well-known in Uganda if the mark is entered on the register through defensive registration as provided under section 47 of the Trademarks Act. Regardless of a mark's international reputation or evidence of recognition elsewhere, enhanced protection as a well-known mark can only be claimed where the mark is defensively registered in Uganda.
Trademarks — Defensive Registration — Exceptionally Well-Known Standard
To qualify for defensive registration under section 47 of the Trademarks Act, a mark must be shown to be exceptionally well-known in Uganda, meaning far above what is ordinary or usual. This requires evidence of extensive recognition within the country, including factors such as the duration of use, the degree of public awareness, the nature of the goods or services, and whether the mark's reputation is widespread or confined to a limited market.
Trademarks — International Treaties — Domestication Requirement
International treaties such as the Paris Convention and TRIPS Agreement do not automatically become part of Ugandan law upon ratification. Under Article 123(2) of the Constitution, Parliament must make laws to govern ratification of treaties. Each state has sovereignty to decide on different approaches to protecting well-known marks, and Uganda has elected to meet its international obligations through defensive registration under section 47 of the Trademarks Act.

Legislation cited (22)

Cases cited (9)

  • Pianotist Co's Application (1906) 23 RPC 774
  • Sabel BV v Puma AG (Case C-251/95)
  • Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (Case C-342/97)
  • Schweppes Limited v E. Rowlands Proprietary Limited [1910] HCA 36
  • Re Eastman Photographic Materials Co's Application (1898) 15 RPC 476
  • Diabolo Trade Mark [1908] 25 RPC 49
  • British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281
  • Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer (Case C-39/97)
  • Industria de Diseño Textil S.A. v Oriental Cuisines Pvt Ltd

Full judgment

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

Industria De Diseno Textil, S.A v Zeregaber General Trading (U) Limited (Trademark Application 78755 of 2023) [2025] UGRSB 40 (31 December 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.