International Distillers Uganda Limited v Toto Limited (Trademark Application 51324 of 2014)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
The Registrar of Trademarks dismissed the opposition to registration of the mark VOLT by International Distillers Uganda Limited in class 33. Held that although both marks contained the dominant word VOLT, the Applicant's mark included the distinctive element Uganda Waragi which maintained an independent distinctive role and eliminated likelihood of confusion. The goods were dissimilar: premixed alcoholic drinks in class 33 versus energy drinks and non-alcoholic beverages in class 32. The marks, assessed globally, created different overall impressions through differences in colour, typeface, layout, and the presence of Uganda Waragi. Opposition dismissed with costs to the Applicant.
Outcome
Applicant permitted to proceed to registration of trademark VOLT in class 33
Facts
International Distillers Uganda Limited applied on 26 November 2014 to register the trademark VOLT for alcoholic beverages (except beers) in class 33. Toto Limited opposed the application on 31 August 2016, arguing that the Applicant's mark was identical with or nearly resembled their registered mark VOLT (registration number 47805) for energy drinks, non-alcoholic beverages, and related goods in class 32, and would likely confuse consumers. The Opponent's mark VOLT had been registered from 5 July 2013. The Applicant, a manufacturer of Uganda Waragi since 1968, had previously registered Uganda Waragi Volt (trademark number 49810) from 30 April 2014 in class 33. The Applicant's mark featured the word VOLT with additional elements including The Original Uganda Waragi with Ginger in stylized fonts on a yellow background. The Opponent's mark displayed VOLT in silver with blue outlines, with smaller text 440 MAS ENERGIA below. Evidence showed Uganda Waragi had grown from 2.7 million cases sold in 2008 to 5.5 million in 2016, establishing it as a super brand with significant reputation.
Issues
- Whether the trademarks are similar.
- Whether there is likelihood of confusion between the Applicant's and Opponent's mark.
- Whether the Applicant's VOLT label contravenes the provisions of the Trademarks Act.
Orders
- Opposition dismissed.
- Applicant shall proceed to register their mark subject to payment of the prescribed fees.
- Opponent shall bear the costs of these proceedings.
Rules and key headnotes
Legislation cited (2)
Cases cited (19)
- PIANOTIST Co. Ltd (1906) 23 RPC 777
- Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24
- Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97) [1999] ECR I-3819
- Shaker di L. Laudato & C. Sas v OHIM (Case C-334/05 P) [2007] ECR I-4529
- Bimbo SA v OHIM (Case C-591/12 P)
- Best Buy Concepts Inc v OHIM (Case T-122/01)
- Frag Comercio Internacional SL v OHIM (Case T-162/08)
- Alejandro v OHIM (Case T-129/01) [2003] ECR II-2251
- Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159
- Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04)
- Anglo Fabrics (Bolton) Ltd & Anor v African Queen Ltd & Anor (HCCS No. 632 of 2006)
- Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690
- Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
- Tuskys (U) Ltd v Tusker Mattresses (U) Ltd (HCCS No. 3 of 2011)
- British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97)
- J Lyons & Co Ltd's Application [1959] RPC 120
- Mustafa Yilmaz v OHIM (Case T-584/10)
- SABEL BV v Puma AG (Case C-251/95) [1997] ECR I-6191
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.