Wakilii

V.G Keshwala & Sons Ltd v Crane Paper Ltd (Trademark No. UG T 2024 83036)

Tribunal · [2025] UGRSB 29 · 2025 Application Partly Allowed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application for cancellation of trademark under section 88 of the Trademarks Act Cap 225
Decision
Respondent's trademark registration ordered varied to remove word "DIAMOND" and diamond device within 14 days, failing which the mark will be removed.

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Held that Crane Paper Ltd's trademark "CRANE PAPER DIAMOND" (No. UG/T/2024/83036) was registered in error under section 88 of the Trademarks Act Cap 225 because it was confusingly similar to V.G Keshwala & Sons Ltd's earlier registered trademark "DIAMOND" (No. 63535, registered 2018). The marks were visually, phonetically, and conceptually similar in respect of the same goods (stationery products in class 16), violating section 25 which prohibits registration of trademarks nearly resembling an earlier mark. The Tribunal ordered variation rather than removal of Crane Paper Ltd's trademark, requiring removal of the word "DIAMOND" and diamond device within 14 days. Bad faith ground failed as no evidence proved improper intention at time of application.

Outcome

Respondent's trademark registration ordered varied to remove word "DIAMOND" and diamond device within 14 days, failing which the mark will be removed.

Facts

V.G Keshwala & Sons Ltd registered trademark No. 63535 "DIAMOND" and device on 29 November 2018 in class 16 for paper, stationery and related goods. On 14 August 2024, Crane Paper Ltd registered trademark No. 83036 "CRANE PAPER DIAMOND" and diamond device in class 16 for ream of paper, exercise books and stationery. On 31 December 2024, Crane Paper Ltd published a newspaper advert warning the public against use of the "DIAMOND" mark, followed by a cease and desist letter to V.G Keshwala on 9 January 2025. Upon inspecting the register, V.G Keshwala discovered that the Registrar had twice rejected Crane Paper Ltd's application but later approved it based on company name change. V.G Keshwala filed an application under section 88 of the Trademarks Act seeking cancellation on grounds of registration in error (due to similarity with its prior mark) and bad faith (due to Crane Paper Ltd's conduct). Crane Paper Ltd denied the allegations and counterclaimed that V.G Keshwala registered in bad faith and had never used its mark until January 2025.

Issues

  1. Whether the Respondent's trademark number 83035 was registered in error?
  2. Whether the Respondent's trademark number 83035 was registered in bad faith?
  3. What remedies are available to the parties?

Orders

  • Application partly succeeds.
  • The Respondent's trademark No. UG/T/2024/83036 was registered in error.
  • The ground of bad faith fails.
  • The remedy of variation of entry is granted under section 88 of the Trademarks Act.
  • The Respondent shall, within 14 days from the date of the ruling, file to alter its trademark in accordance with section 91 of the Trademark Act.
  • The alterations shall remove the word "DIAMOND" and the diamond symbol/device from the Respondent's mark.
  • Where the Respondent does not comply with the condition above, the Registrar shall, without any further notice, remove the trademark on grounds of registration in error.
  • Costs of the application awarded to the Applicant to be paid by the Respondent.

Rules and key headnotes

Trademarks — Cancellation — Person Aggrieved — Locus Standi
Under section 88 of the Trademarks Act, a person is aggrieved and has standing to apply for rectification of the register if they have a real interest in having the mark removed, that is, the continuing existence of the mark on the register is prejudicial to their interests.
Trademarks — Registration in Error — Grounds for Rectification
A trademark is registered in error where grounds existed at the time of registration that should have prevented registration. It is immaterial who made the error. Actions done in error are subject to rectification to avoid absurd or unjust outcomes.
Trademarks — Similarity and Likelihood of Confusion — Test
In determining similarity and likelihood of confusion between two marks, the tribunal must apply a global appreciation test considering all relevant factors through the eyes of the average consumer who perceives a mark as a whole, rarely makes direct comparisons, and relies on imperfect recollection. The visual, aural and conceptual similarities must be assessed by reference to overall impressions created by the marks bearing in mind their distinctive and dominant components.
Trademarks — Disclaimer — Effect on Rights of Prior Registered Owner
A disclaimer on the register does not affect rights of the owner of a prior registered trademark except where the disclaimer arises out of the registration of the trademark in respect of which the disclaimer is made. Permitting registration of a mark containing disclaimed matter which is a protected part of a prior registered mark offends section 19(2) of the Trademarks Act and affects the rights of the prior owner.
Trademarks — Prohibition of Registration — Section 25 and First-to-File Principle
Section 25 of the Trademarks Act prohibits registration of a trademark that is identical with or nearly resembles a trademark already on the register in respect of the same goods or description of goods. This safeguards the first-to-file principle which protects the first mark to be filed or registered. It is immaterial whether the prior registered mark is being used or not as non-use can only be adjudicated in a separate application under section 46.
Trademarks — Bad Faith — Test and Proof
Bad faith in trademark registration arises where a person registers a trademark not to use it as a badge of origin to distinguish their goods or services from others, or with the intention to acquire a right without intention to use the trademark for its proper purpose. Bad faith is a subjective state of mind assessed by examining the proprietor's intention at the time of filing, but must be established objectively by reference to the circumstances of the case.
Trademarks — Remedies — Variation of Entry under Section 88
Where a trademark is registered in error, the Registrar has discretion under section 88 of the Trademarks Act to order variation of the entry rather than removal, particularly where the respondent is already manufacturing and contributing to the economy. Variation may be ordered to remove the parts registered in error while allowing the proprietor to rebrand and continue operations.

Legislation cited (10)

Cases cited (15)

  • Ritz Hotel Ltd v Charles of The Ritz Ltd and Another (1988) 15 NSWLR 158
  • SABEL BV v Puma AG (Case C-251/95)
  • Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97)
  • Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97)
  • Marca Mode CV v Adidas AG & Adidas Benelux BV (Case C-425/98)
  • Matratzen Concord GmbH v OHIM (Case C-3/03)
  • Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04)
  • Shaker di L. Laudato & C. Sas v OHIM (Case C-334/05 P)
  • Bimbo SA v OHIM (Case C-519/12 P)
  • Mandella Millers Ltd v Dembe Trading Enterprises Ltd (Trademark No. 0297790)
  • Simbamanyo Estates Ltd and Another v Equity Uganda Ltd and others (Misc. App No. 583 of 2022)
  • application for cancellation of trademark No. UG/T/2020/68118 "YMCA"
  • Elite Gold Limited v Indo-Bali Distributors Ltd (Trademark Nos. 045697, 043533, 032264) URSB 6
  • Sky Kick UK Ltd v Sky Ltd [2024] UKSC 36
  • Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Case C-529/07)

Full judgment

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V.G Keshwala & Sons Ltd v Crane Paper Ltd (Trademark No. UG T 2024 83036) [2025] UGRSB 29 (14 October 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.