Wakilii

Liberty (ICD) Limited v Liberty Group Limited (Trademark Application 59775 of 2017)

Tribunal · [2020] UGRSB 1 · 2020 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark registration application
Decision
Opposition dismissed; applicant entitled to proceed to registration with amendment specifying services limited to handling international business of exports and imports

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Tribunal held that there was no likelihood of confusion between the opponent's word mark LIBERTY and the applicant's composite mark consisting of the letter L, a cargo train in an orange globe, and the words LIBERTY (ICD) LTD. The marks were visually and conceptually dissimilar, served different customer bases (insurance versus cargo handling), and operated through different trade channels. The application did not offend sections 9, 23, or 25 of the Trademarks Act 2010. The opposition was dismissed and the applicant was entitled to proceed to registration.

Outcome

Opposition dismissed; applicant entitled to proceed to registration with amendment specifying services limited to handling international business of exports and imports

Facts

Liberty (ICD) Limited, a company incorporated in Uganda in 2009 and engaged in inland container depot operations (cargo handling and temporary storage of containerized cargo), applied on 14 September 2017 for registration of a composite trademark in Class 35. The mark consisted of the letter L, a cargo train enclosed in an orange globe, and the words LIBERTY (ICD) LTD below. The application was published in the gazette on 20 October 2017. On 19 December 2017, Liberty Group Limited, which operates in the insurance business and holds a registered word mark LIBERTY (Trademark No. 50303) in Class 35, filed a notice of opposition. The opponent contended that the applicant's mark was identical or nearly resembled its registered mark and would cause confusion. Both parties filed evidence and written submissions.

Issues

  1. Whether there is any likelihood of confusion between LIBERTY and LIBERTY (ICD) LTD marks as applied for.
  2. Whether trademark Application No. 2017/59775 offends sections 9 and 23 of the Trademarks Act 2010.
  3. What remedies are available to the parties.

Orders

  • The applicant is entitled to proceed to register their mark under the Trademarks Act.
  • The applicant shall amend the application to specifically state that their services will be limited to handling international business of exports and imports.
  • The opposition is dismissed.
  • The parties bear their own costs.

Rules and key headnotes

Trademarks — Likelihood of Confusion — Global Assessment Test
When assessing likelihood of confusion between two marks, the tribunal must carry out a global assessment by examining each mark as a whole, taking into account visual, aural, and conceptual similarities, the overall impression created by the marks, their distinctive and dominant components, and all relevant facts including the nature of the goods or services and the average consumer's perception.
Trademarks — Similarity of Goods and Services — British Sugar Test
In determining similarity of goods or services for purposes of assessing likelihood of confusion, the tribunal must consider the respective uses of the goods or services, the respective users, the physical nature of the goods or services, the respective trade channels through which they reach the market, and the extent to which they are competitive.
Trademarks — Distinctiveness — Company Name as Trademark
A trademark may consist of the name of a company represented in a special or particular manner under section 9(1)(a) of the Trademarks Act 2010, and where the applicant's mark includes the company name together with a distinctive graphical design, the mark as a whole may be sufficiently distinctive to avoid confusion with a similar word mark owned by another party.
Trademarks — Composite Marks — Comparison with Word Marks
Where an applicant's mark is a composite mark consisting of a graphical device, a logo, and words, and the opponent's mark is a simple word mark, the marks will not be considered confusingly similar if the composite mark's dominant elements (the graphical design and additional words) create a sufficiently different overall impression, even if both marks share a common word element.

Legislation cited (4)

Cases cited (5)

  • Anglo Fabrics (Bolton) Ltd and Another v African Queen Ltd and Another (Civil Suit No. 632 of 2006)
  • Canon Kabushiki Kaisha v Metro Goldwyn-Mayer Inc [1999] RPC 117
  • Office of Harmonization in the Internal Market (OHIM) case C - 334/05 - P
  • International Health Care Ltd v Asda Stores Ltd [2012] EWCA
  • British Sugar v James Robertson [1996] RPC 281

Full judgment

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Liberty (ICD) Limited v Liberty Group Limited (Trademark Application 59775 of 2017) 2020 UGRSB 1 (12 March 2020)
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.