Wakilii

Nanoomal Issardas Motiwala (U) Limited v Himalaya Global Holdings Limited [2024] UGRSB 13

Tribunal · 2024 Application Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark application for registration of the word EVECARE in class 5
Decision
Application for registration of trademark EVECARE refused

Observed later treatment

No later-treatment classification is recorded for this judgment.

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.

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 tribunal held that the applicant's trademark EVECARE is confusingly similar to the opponent's registered mark EVE in class 5 for pharmaceutical products. The word EVE is the dominant and distinctive element in both marks. The addition of CARE does not create distinctiveness as it merely describes the character of healthcare goods. Visually and conceptually, an ordinary consumer is likely to be confused and believe the products originate from the same or economically linked undertakings. The mark lacks distinctiveness under section 9 of the Trademarks Act 2010. The opposition succeeded and the application for registration was refused.

Outcome

Application for registration of trademark EVECARE refused

Facts

The applicant, a company incorporated in Dubai, filed application UG/T/2010/040921 to register the word EVECARE as a trademark in class 5 for pharmaceutical and veterinary preparations and related goods. The applicant is the registered owner of the disputed trademark in multiple jurisdictions including India, the European Union, and South Korea. The opponent, a company incorporated in Uganda, is the registered proprietor of trademark number A40309 EVE and device, also registered in class 5 for pharmaceutical and veterinary preparations and related goods. The opponent objected on grounds that EVECARE is similar to its registered mark EVE and is likely to deceive and cause confusion between the goods of the two parties, given that both marks contain the word EVE and are used for the same or similar goods in class 5.

Issues

  1. Whether the applicant's trademark EVECARE is confusingly similar to the opponent's registered trademark EVE number A40309.
  2. Whether the applicant's mark is distinctive within the meaning of section 9 of the Trademarks Act 2010.
  3. Whether the applicant's mark offends section 23 of the Trademarks Act 2010.

Orders

  • Opposition succeeds.
  • Application for registration of trademark number UG/T/2010/40921 refused.
  • Each party to bear its own costs.

Rules and key headnotes

Trademarks — Confusing Similarity — Test for Assessment
In assessing whether two trademarks are confusingly similar, the marks must be compared in terms of their visual, aural, and conceptual similarity and the overall impression created in the mind of the ordinary consumer, bearing in mind the dominant elements. The test requires consideration of the look and sound of the marks, the goods to which they are applied, the nature and kind of customer likely to buy the goods, and all surrounding circumstances.
Trademarks — Dominant Element — Resort to Analysis
A trademark should be looked at as a whole. Resort to considering the dominant part should be done only when all the other components of a complex mark are negligible. An ordinary consumer normally perceives a mark as a whole and does not proceed to analyze its various details.
Trademarks — Phonetic Similarity — Assessment Principles
Phonetic similarity refers to the degree of resemblance between two trademarks in their pronunciation or sound. The key elements for determining the overall phonetic impression are the syllables and their particular sequence and stress. The assessment of common syllables is particularly important when comparing marks phonetically, as a similar overall phonetic impression will be determined mostly by those common syllables and their identical or similar combination.
Trademarks — Conceptual Similarity — Semantic Content
Two signs are identical or similar conceptually when they are perceived as having the same or analogous semantic content in the public. If the signs refer to similar concepts, they are conceptually similar.
Trademarks — Distinctiveness — Descriptive Elements
Where an additional element in a trademark merely describes the character of the goods and is not distinctive, it does not create distinctiveness in the mark and is negligible in determining the overall impression. If the additional element has a low level of distinctiveness, the marks are more likely to be deceptively similar even though they share a common element.
Trademarks — Likelihood of Confusion — Direct and Indirect Confusion
Confusion in the market takes two forms: direct and indirect confusion. Direct confusion occurs where an ordinary consumer would buy one product mistaking it to be the other due to close resemblance of the marks. Indirect confusion occurs where there is a possibility of consumers associating the goods of one entity with those of another, believing that the goods originate from the same manufacturer or economically linked undertakings. The risk that the public might believe that the goods come from the same or economically linked undertakings constitutes a likelihood of confusion.
Trademarks — Section 25 Trademarks Act 2010 — Prohibition of Registration
Section 25 of the Trademarks Act 2010 prohibits the registrar from registering similar or identical marks that are likely to cause confusion in the market. It is not enough that the trademarks are similar; the goods for which the subsequent mark is sought to be registered must be the same or of the same description or must be services associated with the goods. This nexus between the similarity of the disputed marks and the nature of goods is the basis for determination of likelihood of confusion.

Legislation cited (5)

Cases cited (16)

  • Pianotist Co's Application (1906) 23 RPC 774
  • opposition to trademark application No. 40233 "JJABARI"
  • Specsavers International Healthcare Limited v Asda Stores Limited [2012] EWCA Civ 24
  • Sabel v Puma
  • Sabel v Puma AG (1998) RPC 199
  • C-251/95 Sabel
  • Bulova Accutron Trade Mark [1969] RPC 102
  • Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44
  • Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328
  • Application by Coles Myer Ltd (1993) 26 IPR 577
  • PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078
  • Reed Plc v Reed Business Information [2004] RPC 40
  • Madio Ag v Thomson Multimedia in case C-120/04
  • Cannon Kabushiki Kaisha
  • Case C-10/89 HAG GF (HAG II) [1990] ECR I-3711
  • Sazerac Brands LLC v Liverpool Gin Distillery Limited [2020] EWHC 2424 (Ch)

Full judgment

↓ Download PDF

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

Nanoomal Issardas Motiwala (U) Limited v Himalaya Global Holdings Limited 2024 UGRSB 13 (12 June 2024)
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.