Wakilii

NBA Properties Inc v Monster Energy Company (Trademark Application 51486 of 2014)

Tribunal · [2021] UGRSB 2 · 2021 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark registration application under the Trademarks Act 2010
Decision
Opposition dismissed; trademark application allowed to proceed to registration

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that the composite mark 'TORONTO RAPTORS' featuring a basketball with thick lines does not resemble the opponent's scratch mark comprising three vertical wavy lines. The dominating impact of the words and basketball means consumers will perceive the thick lines as mere flourishes. Further, the applicant's services in class 41 (education, training, entertainment, sporting and cultural activities in basketball) are not associated with the opponent's goods in classes 5 and 32 (nutritional supplements and beverages) such that consumers would think they originate from the same source. Opposition dismissed; applicant may proceed to registration.

Outcome

Opposition dismissed; trademark application allowed to proceed to registration

Facts

On 15 December 2014, NBA Properties Inc applied to register the trademark 'TORONTO RAPTORS' for services in class 41 relating to entertainment, education, sporting and cultural activities in the field of basketball. The application was published in the gazette on 13 November 2015. Monster Energy Company opposed the registration on grounds that the Toronto Raptors mark was confusingly similar to the opponent's registered marks numbers 32685 and 32686 (a scratch mark comprising three vertical wavy lines) and was not distinctive. The opponent's scratch mark was registered for nutritional supplements (class 5) and beverages (class 32). The opponent argued that the thick lines on the basketball in the applicant's composite mark resembled their scratch mark and that their goods were associated with the applicant's services through sponsorship of sports events.

Issues

  1. Whether the applicant's mark 'TORONTO RAPTORS' resembles the opponent's registered scratch mark so as to likely cause confusion.
  2. Whether the applicant's services in class 41 are associated with the opponent's goods in classes 5 and 32 such that registration should be refused under section 25(2) of the Trademarks Act.

Orders

  • Opposition fails.
  • Applicant shall proceed to register their mark subject to prescribed fees.
  • Opponent shall bear the costs of these proceedings.

Rules and key headnotes

Trademarks — Resemblance — Assessment of Similarity — Overall Impression Test
In assessing whether trademarks resemble each other, the tribunal must consider the marks by their look and sound, the goods or services to which they are applied, the nature and kind of customer likely to buy those goods or services, and all surrounding circumstances, judging what is likely to happen if each trademark is used in a normal way.
Trademarks — Conceptual Similarity — Idea of the Mark — Perception by Reasonable Consumer
The relevant factor in determining conceptual similarity is not what the trademark owner intended the mark to communicate, but rather the perception of the mark by a reasonable consumer. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance, although this fact may be taken into account in deciding whether two marks which really look alike or sound alike are likely to deceive.
Trademarks — Composite Marks — Dominant Elements — Overall Impression
Since the average consumer perceives a mark as a whole and does not proceed to analyse its various details, where a composite mark contains dominating elements such as prominent words and central imagery, other elements may be perceived as mere flourishes and will not weigh significantly in the overall perception of the mark.
Trademarks — Association of Goods and Services — Section 25(2) Trademarks Act
Under section 25(2) of the Trademarks Act, association between goods and services is defined by whether there is a close connection in the sense that one is indispensable or important for the use of the other such that customers may think the responsibility for those goods and services lies with the same undertaking. The determination depends on whether customers would think the goods and services originate from the same source.
Trademarks — Opposition — Use of Mark on Unregistered Classes — Relevance
In accordance with section 25(2) of the Trademarks Act, where an opponent has no registration of their mark for goods in particular classes, evidence of use of the mark on goods in those classes is not relevant in determining whether the applied-for mark should be refused registration.

Legislation cited (2)

Cases cited (9)

  • Pianotist Co Ltd (1906) 23 RPC 77
  • Jafferjee v Scarlett [1937] HCA 36
  • Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15
  • Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (C-120/04)
  • Bimbo SA v OHIM (C-591/12P)
  • Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690
  • Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (C-39/97)
  • Lyons & Co Ltd [1959] RPC 120
  • Boston Scientific Ltd v OHIM (T-325/06)

Full judgment

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

NBA Properties Inc v Monster Energy Company (Trademark Application 51486 of 2014) 2021 UGRSB 2 (15 February 2021)
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.