Wakilii

Liberty Group Limited v Loreal Logistics Limited and Another (Civil Appeal No. 79 of 2023)

High Court · [2025] UGCOMMC 407 · 2025 Appeal Allowed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Appeal from ruling of the Registrar of Trademarks refusing to cancel respondent's trademark registration
Decision
Appellant's trademark application to be registered; respondent's conflicting registration cancelled

Observed later treatment

Cited — treatment unverified cited in 1 (treatment unverified) Sequitur — Uganda’s citator · Derived from citing cases in the Wakilii corpus — not an assertion that this case is good law.

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.

No adverse treatment recorded Cited 1 time with no adverse treatment recorded; not yet tested on the merits. Derived from citing cases in the Wakilii corpus — a deterministic signal, not legal advice.

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

The High Court allowed the appeal, holding that the Registrar of Trademarks erred in refusing to cancel respondent's trademark registration. The court found that: (1) the appellant's trademark application No. 45153 was filed first on 16th April 2012 and remained pending when respondent applied for identical mark on 2nd April 2013; (2) respondent failed to conduct proper due diligence before applying, which created prima facie evidence of bad faith; (3) appellant had established a well-known mark through prior use since 2006; (4) the doctrine of honest concurrent use was inapplicable where respondent's use arose only after erroneous registration; (5) public confusion between identical marks was inevitable, overriding the defence of laches for non-monetary relief.

Outcome

Appellant's trademark application to be registered; respondent's conflicting registration cancelled

Facts

Appellant, a South African financial services company, applied to register trademark "LIBERTY" in Class 36 on 16th April 2012. On 2nd April 2013, two weeks before expiry of appellant's twelve-month processing period, respondent applied for an identical mark for identical services. Respondent's mark was registered on 22nd July 2013 despite appellant's pending application. The Registrar initially recalled respondent's certificate recognising the error, but later reversed that decision. Appellant had used the mark in Uganda since 2006 and held multiple related trademark registrations. Respondent provided no evidence of use prior to its application. On 5th March 2021, appellant formally applied to cancel respondent's registration. The Registrar refused cancellation, instead ordering concurrent use under section 27 of the Trade Marks Act, citing appellant's eight-year delay and respondent's intervening goodwill.

Issues

  1. Whether the Assistant Registrar's findings regarding the delayed registration process of the appellant's trademark are erroneous.
  2. Whether the Assistant Registrar correctly applied the first to file/prior application principle to the facts of the case.
  3. Whether the Assistant Registrar can be faulted for the finding that the respondent did not act in bad faith when it sought registration of its trademark.
  4. Whether the Assistant Registrar correctly applied the principle of bona fide use to the facts of the case.
  5. Whether the Assistant Registrar was justified in rejecting the applicability of the principle of well-known trademarks to the facts of the case.
  6. Whether the Assistant Registrar came to the correct conclusion when he allowed concurrent use instead of cancellation of the respondent's trademark.

Orders

  • Appeal allowed.
  • Ruling of the Assistant Registrar of Trademarks delivered on 14th July 2023 set aside.
  • Registrar of Trademarks directed to cancel from the Register trademark registration No. 47160 "LIBERTY" in Part A Class 36 in the name of the respondent.
  • Registrar of Trademarks directed to register appellant's trademark application No. 45153 "LIBERTY" in Part A Class 36 in respect of insurance, financial affairs, monetary affairs, and real estate affairs.
  • Costs of the appeal awarded to the appellant.

Rules and key headnotes

Trademark Registration — First to File Principle — Constructive Use Priority
The filing of an application to register a trademark constitutes constructive use of the mark, conferring a right of priority nationwide in effect within the twelve months following the filing date, which protects the applicant's rights against later filers who do not act in good faith.
Trademark Registration — First Good Faith User Exception — Prior Use and Goodwill
By virtue of section 41 of The Trade Marks Act, good faith prior use of a trademark can override the first to file principle. A prior user with a well-established reputation and goodwill in their mark can rely on this to prevent a later registration that would harm their business, even if the later mark was filed first.
Trademark Registration — Bad Faith — Failure to Conduct Due Diligence
Apart from actual dishonesty, bad faith encompasses commercially unacceptable behaviour. Applying for an identical or confusingly similar mark to one that is already pending registration can be strong prima facie evidence of a bad faith application. Failure to conduct proper due diligence, including adequate trademark searches, undermines a claim of good faith where a reasonable person conducting such searches would have discovered the pending application.
Trademark Registration — Well-Known Marks — Protection Prior to Registration
A well-known trademark should be understood as one which is popularly or widely known by certain parts of the public within Uganda, regardless of where it is used or registered. The well-known trademark standard is applied in opposition and invalidation proceedings to curtail parasitic behaviour. The existence of an earlier unregistered mark with established goodwill can be a ground for refusal or cancellation of a later registration.
Trademark Registration — Section 88 Rectification Power — Registry Error
Section 88 of The Trade Marks Act permits a person aggrieved by an entry wrongly remaining on the register to apply to the Registrar to expunge the entry. The entry on the register of a trademark despite the existence of a well-known unregistered mark capable of maintaining a passing off action can be challenged under section 88 and potentially removed, as it should not have been admitted in the first place.
Trademark Registration — Honest Concurrent Use — Post-Registration Use Distinguished
Under section 27 of The Trade Marks Act, the doctrine of honest concurrent use requires that both parties independently adopted and used their marks in good faith for a significant period, without knowledge of the other party's prior rights. The exception cannot be invoked where honest concurrent use arose only after an erroneous registration rather than from independent prior use. The exception also cannot be invoked where the opposed trademark was registered in bad faith, infringes upon existing rights, or creates confusion in the market.
Trademark Registration — Laches Defence — Public Interest Exception
While the defence of laches may bar monetary relief for past infringement, it does not necessarily prevent a court from issuing an order of cancellation or injunction to stop future infringing activity where public confusion between the marks is inevitable, because trademark law is meant to protect the public from confusion and not only to protect the brand-value of a business.

Legislation cited (19)

  • Trade Marks Act s.7(2)(a)
  • Trade Marks Act s.16(3)
  • Trade Marks Act s.25
  • Trade Marks Act s.27
  • Trade Marks Act s.34
  • Trade Marks Act s.35
  • Trade Marks Act s.41
  • Trade Marks Act s.44
  • Trade Marks Act s.44(3)(b)
  • Trade Marks Act s.47
  • Trade Marks Act s.50
  • Trade Marks Act s.52
  • Trade Marks Act s.88
  • Trademarks Regulations, 2012 reg.16
  • Trademarks Regulations, 2012 reg.23
  • Trademarks Regulations, 2012 reg.28
  • Trademarks Regulations, 2012 reg.40
  • Trademarks Regulations, 2012 reg.89
  • Trademarks Regulations, 2012 reg.90

Cases cited (27)

  • Father Nanensio Begumisa and three Others v Eric Tiberaga (Supreme Court Civil Appeal No. 17 of 2000)
  • National Insurance Corporation v Mugenyi and Company Advocates [1987] HCB 28
  • Wasswa J Hannington and another v Ochola Maria Onyango and three Others [1992-93] HCB 103
  • Devji v. Jinabhai (1934) 1 EACA 89
  • Mbogo and another v. Shah [1968 E.A. 93
  • H.K. Shah and another v. Osman Allu (1974) 14 EACA 45
  • Patel v. R. Gottifried (1963) 20 EACA, 81
  • Haji Nadin Matovu v Ben Kiwanuka (Supreme Court Civil Application No. 12 of 1991)
  • Sheikh Jama v. Dubat Farah [1959] 1 EA 789
  • Hussein Janmohamed and Sons v. Twentsche Overseas Trading Co Ltd [1967] 1 EA 287
  • Banco Arabe Espanol v Bank of Uganda (Supreme Court Civil Appeal No. 8 of 1998)
  • Thomas James Arthur v. Nyeri Electricity Undertaking [1961] 1 EA 492
  • Mohamed Kalisa v Gladys Nyangire Karumu and two others (Supreme Court Civil Reference No. 139 of 2013)
  • Abro Industries Inc v. Abri General Traders (Civil Appeal No. 323 of 2021) [2023] TZHC 19740
  • Alex Pirie and Sons Limited's Application (1932) 49 RPC 195
  • Lin Heung Tea House & Bakery v. Guangzhou Catering Services Enterprises Group Co. Ltd. [2015] 4 HKC 333
  • Parkington & Co Ltds Application (1946) 63 RPC 171
  • Cohen v. Fidler & Co (1916) 33 RPC 129
  • Cortez Investments Ltd v. Olphert & Collins [1984] 2 NZLR 434
  • Holt & Co. (Leeds) Application [1957] RPC 289
  • Re Trade Mark Solprene (1980) 1 NZIPR 310
  • VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 53 IPR 466
  • Kiwi Polish Co v. Kempthorne, Prosser & Co (1925) NZLR 26 at 69
  • Red Bull GmbH v. Sun Mark [2012] EWHC 1929 (Ch) para 133; [2013] ETMR 53
  • In re H (Minors) [1996] AC 563 at [76]
  • Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. and another CS(COMM) 378/2018, Judgment of 1st May, 2024 Delhi (HC)
  • Pinnacle Advertising and Marketing Group, Inc. v. Pinnacle Advertising and Marketing Group, LLC, Case No. 19-15167 (11th Cir. Aug. 2, 2021)

Cases citing this judgment (1)

How later Ugandan judgments in the Wakilii corpus have cited this case. Treatment labels come from Sequitur — Uganda’s citator — each backed by a verbatim span from the citing judgment, and are not an assertion that this case is, or is not, good law.

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Liberty Group Limited v Loreal Logistics Limited and Another (Civil Appeal No. 79 of 2023) [2025] UGCommC 407 (4 November 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.