Wakilii

Primecare International Ltd v Four Star Beverages Ltd (Civil Appeal No. 111 of 2025)

High Court · [2025] UGCOMMC 474 · 2025 Appeal Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Appeal from the decision of the Assistant Registrar of Trademarks cancelling the appellant's trademark registration
Decision
Appeal dismissed; cancellation of appellant's trademark registration upheld

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The High Court dismissed the appeal and upheld the Assistant Registrar's decision cancelling the appellant's 'BLACK ZEBRA' trademark registration. The court held that the respondent's 'FOUR STAR ZEBRA' trademark was still on the register when the appellant registered its mark in September 2020, as the respondent's mark had not yet expired and enjoyed statutory protection for one year after removal. The court further held that the marks were confusingly similar, likely to cause confusion among consumers purchasing alcoholic beverages in bars and nightclubs, and that the respondent had demonstrated bona fide use of its trademark through ongoing litigation over bottling machinery.

Outcome

Appeal dismissed; cancellation of appellant's trademark registration upheld

Facts

The appellant registered the trademark 'BLACK ZEBRA' (Nos. 068855 and 068856) on 8 September 2020 for alcoholic beverages in Classes 32 and 33, after conducting a search at URSB which showed no similar existing trademark. The respondent had registered 'FOUR STAR ZEBRA' (No. UG/T/2014/049445) on 12 March 2014, which expired on 12 March 2021 but was renewed on that date. In April 2023, the respondent applied to the Registrar of Trademarks for cancellation of the appellant's mark, claiming it was confusingly similar and infringed on its registered trademark. The respondent had been unable to use its trademark in polythene packaging after a government ban in October 2018 and was involved in litigation with an Indian supplier over bottling machinery. The Assistant Registrar found the marks confusingly similar, particularly the central element 'ZEBRA', and ordered cancellation of the appellant's registration on the ground that it was an entry wrongly remaining on the register under section 88 of the Trademarks Act.

Issues

  1. Whether the Assistant Registrar of Trademarks erred in law and fact when she did not find that at the time of the Appellant's registration of its mark 'BLACK ZEBRA' Nos. 068856, the Respondent's mark 'FOUR STAR ZEBRA' had expired and the period for renewal had lapsed, thereby rendering the Respondent's mark no longer valid and enforceable.
  2. Whether the Appellant's trademarks 'BLACK ZEBRA' Nos. 068855 and 068856 are confusingly similar to the Respondent's prior registered mark 'FOUR STAR ZEBRA'.
  3. Whether the Appellant's marks were registered in error and amounted to an entry wrongly remaining on the Register under section 88 of the Trademarks Act.
  4. Whether the Assistant Registrar erred in requiring that an application for removal on grounds of non-use must be filed as a separate and independent application.

Orders

  • Appeal dismissed.
  • The Assistant Registrar's decision dated 12th September 2025 is upheld.
  • The Appellant's trademarks 'BLACK ZEBRA' Registration Nos. 068855 and 068856 remain cancelled from the Register of Trademarks.
  • Costs of the appeal awarded to the Respondent.

Rules and key headnotes

Trademarks — Statutory Protection Period After Removal — Section 28(1) of Trademarks Act
A trademark removed from the register for failure to pay renewal fees is deemed to remain on the register for one year from the date of removal, and during this period the Registrar must refuse applications for similar or identical marks unless the exceptions in section 28(2) are satisfied.
Trademarks — Confusing Similarity — Likelihood of Confusion Test
Likelihood of confusion is determined by the nature of the commodity, the class of its purchasers, and the mode of purchase; where goods are sold in bars, nightclubs and lounges where consumers make quick decisions, marks sharing a central distinctive element such as 'ZEBRA' are likely to cause confusion among ordinary casual consumers.
Trademarks — Bona Fide Use — Pending Litigation as Evidence of Use
Pending litigation over breach of contract for the supply of bottling machinery constitutes evidence of bona fide use of a trademark, particularly where the litigation relates to compliance with government policy requirements affecting the packaging and sale of products bearing the trademark.
Trademarks — Application for Removal for Non-Use — Prescribed Procedure
An application for removal of a trademark from the register on grounds of non-use must be filed as a separate independent application in the prescribed form (Form TM 37) in accordance with section 46(1) of the Trademarks Act and Regulation 71 of the Trademarks Regulations; a statement of grounds in defence cannot substitute for the prescribed application procedure.
Quasi-Judicial Powers — Registrar of Trademarks — Standard of Review on Appeal
An appellate court will not interfere with the exercise of discretion by the Registrar of Trademarks unless satisfied that the Registrar misdirected himself or herself in some matter and as a result came to a wrong decision, or unless it is manifest from the case as a whole that the Registrar was clearly wrong in the exercise of discretion and injustice resulted.
Trademarks — Registrar's Error — Concurrent Use
Systemic errors by the Registrar in allowing registration of a confusingly similar mark may warrant concurrent use, especially where the applicant has already invested in marketing the trademark, whereas an individual applicant's error may lead to refusal of the application; however, concurrent use cannot be granted where it would deny consumers knowledge of the origin and producer of the product.
Trademarks — Well-Known Marks — Protection Beyond Likelihood of Confusion
A mark can be recognised purely on its reputation and public knowledge; owners of exceptionally well-known marks can prevent others from using identical or similar marks even for dissimilar goods or services, which goes beyond the standard likelihood of confusion test for regular trademarks.

Legislation cited (16)

  • Trademarks Act Cap.225 s.21(1)
  • Trademarks Act Cap.225 s.21(2)
  • Trademarks Act Cap.225 s.28(1)
  • Trademarks Act Cap.225 s.28(2)(a)
  • Trademarks Act Cap.225 s.28(2)(b)
  • Trademarks Act Cap.225 s.46(1)
  • Trademarks Act Cap.225 s.50
  • Trademarks Act Cap.225 s.52
  • Trademarks Act Cap.225 s.66
  • Trademarks Act Cap.225 s.88
  • Trademarks Regulations 2012 Regulation 47(1)
  • Trademarks Regulations 2012 Regulation 71
  • Trademarks Regulations 2012 Regulation 89
  • Trademarks Regulations 2012 Regulation 90
  • Trademarks Regulations 2023 Regulation 89
  • Civil Procedure Act Cap.282 s.98

Cases cited (7)

  • Father Nanensio Begumisa and three Others v Eric Tiberaga (SCCA No. 17 of 2000)
  • Liberty Group Limited v Loreal Logistics Limited (Civil Appeal No. 79 of 2023)
  • Sheikh Jama v. Dubat Farah [1959] 1 EA 789
  • Thomas James Arthur v. Nyeri Electricity Undertaking [1961] 1 EA 492
  • Mohamed Kalisa v Gladys Nyangire Karumu and two others (SC Civil Reference No. 139 of 2013)
  • Fredrick Zaabwe v Orient Bank and 5 Ors (SCCA No. 4 of 2006)
  • Abro Industries Inc v. Abri General Traders (Civil Appeal No. 323 of 2021) [2023] TZHC 19740

Full judgment

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Primecare International Ltd v Four Star Beverages Ltd (Civil Appeal No. 111 of 2025) [2025] UGCommC 474 (22 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.