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Liberty Group Limited v Liberty ICD Limited (Trademark Application 47160 of 2013)

Tribunal · [2023] UGRSB 5 · 2023 Application Partly Allowed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of registered trademark before the Registrar of Trademarks
Decision
Application for cancellation dismissed; concurrent use permitted subject to conditions requiring modification of applicant's mark

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that while the applicant filed its trademark application first in 2012, its inordinate delay of eight years to complete registration and challenge the respondent's mark, combined with the respondent's lawful registration and extensive use of the mark since 2013, constituted special circumstances warranting concurrent use under section 27 of the Trademarks Act 2010. Application for cancellation dismissed; concurrent use permitted subject to modification of applicant's mark to prevent confusion.

Outcome

Application for cancellation dismissed; concurrent use permitted subject to conditions requiring modification of applicant's mark

Facts

On 16 April 2012, Liberty Group Limited filed trademark application No. 45153 for "LIBERTY" in class 36 for insurance and financial services. On 2 April 2013, Liberty Properties Ltd (later assigned to Liberty ICD Limited) filed application No. 47160 for the same mark in the same class, which was advertised, unopposed, and registered on 22 July 2013. The applicant's file allegedly went astray and no formal follow-up was made until 2018 when the Registrar rejected the applicant's application due to the respondent's existing registration. In 2018, the Registrar initially attempted to recall the respondent's certificate but later correctly determined she lacked such power. The applicant filed this cancellation application in March 2021, eight years after the respondent's registration. The respondent had by then operated under the LIBERTY brand for eight years and registered the mark in multiple additional classes.

Issues

  1. Whether the respondent's trademark No.47160 was lawfully registered?
  2. What remedies are available to the parties?

Orders

  • Application partially succeeds.
  • Concurrent use of the trademark permitted under section 27 of the Trademarks Act 2010.
  • The applicant shall amend its application and modify its trademark in a manner that will ensure co-existence with the respondent's mark without causing confusion.
  • The Registrar shall examine and approve the modified version of the mark to ensure harmonious co-existence.
  • Each party shall bear its own costs.

Rules and key headnotes

Trademarks — Cancellation — Discretion of Registrar — Special Circumstances
Under section 88 of the Trademarks Act 2010, the Registrar has discretion to make, expunge, or vary entries on the register and may decide any question necessary for rectification, including whether to grant concurrent use under section 27 where special circumstances exist.
Trademarks — First to File Principle — Protection from Date of Filing
The Ugandan trademark system protects marks from the date of filing and not from the date of grant of registration, following the first-to-file principle rather than the first-to-use principle.
Trademarks — Section 25 — Protection of Pending Applications
Section 25 of the Trademarks Act 2010 protects not only registered trademarks but also pending applications already on the register, as evidenced by the words "belonging to a different owner and already on the register", and the Registrar is required to reject applications for marks similar to pending applications under section 7(2)(a).
Trademarks — Concurrent Use — Special Circumstances — Inordinate Delay
Where an applicant delays eight years to complete its trademark application and to challenge a subsequently registered similar mark, and the registered proprietor has operated under the mark and built brand recognition during that period, these constitute special circumstances justifying concurrent use under section 27 of the Trademarks Act 2010 rather than cancellation.
Trademarks — Search Requirements — Section 5 — Purpose and Effect
The search required under section 5 of the Trademarks Act 2010 is for the applicant's own knowledge of marks existing on the register and is not required to be submitted to the Registrar, as the Registrar conducts an independent search during substantive examination under section 25.
Trademarks — Well-Known Marks — Paris Convention Article 6bis — Domestic Application
Article 6bis of the Paris Convention on well-known marks is domesticated in Uganda under section 47 of the Trademarks Act 2010, which applies to defensive registration of exceptionally well-known marks in all classes, and cannot be invoked as a basis for cancellation proceedings.
Trademarks — Section 44 — Country of Origin Protection — Scope of Application
Section 44 of the Trademarks Act 2010, which provides protections for trademarks registered in the country of origin, applies only to opposition proceedings and not to applications for cancellation of already registered trademarks.

Legislation cited (22)

Cases cited (7)

  • Capital Radio Ltd v FM Holding and 2 others (HCCS No. 350 of 2005)
  • Kampala Stocks Supermarket Co. Ltd v Seven Days International Ltd (Civil Suit No. 112 of 2015)
  • Re Morgan (1881) 18 Ch 93 CA
  • Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015)
  • Application for cancellation of trademark No.59228 "weatherguard" in class 2 in the names of Akso Nobel Coatings International Bv and application for cancellation by Kansai Plascon Uganda Ltd
  • McDonalds Corp v Joburgers Drive-Inn Restaurant PTY LTD 1997 (1) SA 1 (A)
  • Wave Intellectual Property Inc. v Agaba Ernest Opposition to Application NO. UG/T2022/074413 'WAVE EXPRESS' IN CLASS 36

Full judgment

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

Liberty Group Limited v Liberty ICD Limited (Trademark Application 47160 of 2013) 2023 UGRSB 5 (14 July 2023)
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.