Wakilii

VG Keshwala Sons Limited v Nintendo Company Limited (Trademark Registration 56916 of 2016)

Tribunal · [2023] UGRSB 12 · 2023 Application Dismissed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark registration application
Decision
Application for trademark registration refused; opposition succeeded

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

The Tribunal held that Nintendo Company Limited, as owner of the well-known trademark 'POKEMON' registered in multiple countries including Japan, had locus standi to oppose VG Keshwala & Sons Limited's application to register an identical mark in Uganda. The Tribunal found that the marks were visually and aurally identical, creating a likelihood of confusion among consumers. The opponent satisfied the requirements of Section 44 of the Trademarks Act 2010 for protection of foreign marks, having undertaken to register the mark in Uganda within three months and having established that Japan, as a Paris Convention member state, accords reciprocal protection to Ugandan marks. The opposition succeeded and the application for registration was refused.

Outcome

Application for trademark registration refused; opposition succeeded

Facts

On 30 September 2016, VG Keshwala & Sons Limited applied to register the trademark 'POKEMON' in Class 30 for confectionery and biscuits. The application was advertised in the Uganda Gazette. Nintendo Company Limited, a Japanese company, opposed the application, contending that it had owned the trademark 'POKEMON' since 1998 in relation to video games and had expanded globally. Nintendo's mark had been registered in numerous countries but not yet in Uganda at the time of opposition. Nintendo filed a notice of opposition on 13 February 2017 after being granted an extension of time. Nintendo claimed the mark was well-known, having been broadcast in 95 countries and viewed by over 72 million viewers. VG Keshwala & Sons Limited challenged Nintendo's locus standi to oppose, arguing that the mark was not registered in Uganda and that the Paris Convention had not been domesticated by Ugandan legislation.

Issues

  1. Whether the opponent has the right to object to the registration of Trademark No. 56916, 'POKEMON'?
  2. Whether there is a likelihood of confusion between 'POKEMON' and 'POKEMON'?
  3. Whether Trademark No. 56916 POKEMON offends Section 9, Section 23, and Section 44 of the Trademarks Act 2010?
  4. What are the remedies available for the parties?

Orders

  • Opposition allowed.
  • Application for registration of Trademark No. 56916 'POKEMON' in Class 30 by VG Keshwala & Sons Limited refused.
  • Each party to bear its own costs.

Rules and key headnotes

Trademarks — Locus Standi — Foreign Trademark Owner's Right to Oppose Registration
A foreign trademark owner who is not yet registered in Uganda has locus standi to oppose the registration of an identical or similar mark where the owner undertakes to apply for registration in Uganda within three months of filing the opposition and the owner's country of origin is a party to the Paris Convention for the Protection of Industrial Property, which Uganda has domesticated through judicial precedent and statutory provisions in the Trademarks Act 2010.
Trademarks — Well-Known Marks — Protection Under Paris Convention Article 6bis
A trademark is 'well-known' if it is well-known to persons interested in the goods or services to which it relates and is universally recognizable by the general public. Well-known trademarks enjoy wider protection under trademark law due to their reputation, and Article 6bis of the Paris Convention extends protection to well-known trademarks in member countries even though they are not registered or used in that country, the protection resulting from the mere fact of the mark's reputation.
Trademarks — Section 44 Requirements — Protection of Foreign Marks
Under Section 44 of the Trademarks Act 2010, the Registrar may refuse to register a trademark if it is identical with or nearly resembles a trademark already registered in a country from which the goods originate, provided that the person objecting undertakes to apply for registration in Uganda within three months and the country of origin accords reciprocal treatment to Ugandan goods and services. Uganda's membership in the Paris Convention satisfies the reciprocity requirement where the foreign mark originates from another Paris Convention member state.
Trademarks — Likelihood of Confusion — Visual and Aural Similarity
In determining likelihood of confusion between two trademarks, the marks must be assessed globally based on the overall impression given by the marks, taking into account their visual, aural, and conceptual similarity. Where two marks are visually identical save for minor differences (such as the use of an apostrophe in one letter) and are pronounced identically, there is a real probability of confusion among consumers, and an average reasonable customer is likely to associate the two marks and attribute them to the same producer.
Trademarks — Distinctiveness — Reputation and Global Recognition
A trademark's distinctive character must be assessed by considering whether it is inherently and factually adapted to distinguish goods or services. A mark that has obtained distinctiveness through decades of use and global reputation warrants broader protection. Where a mark has no dictionary meaning in the local language and has acquired distinctiveness through extensive use and recognition globally, including through television coverage, advertising, and internet accessibility, it is entitled to protection even before registration in the local jurisdiction.
Trademarks — Registration Process — Effect of Acceptance by Registrar
Mere acceptance of a trademark application by the Registrar, with or without conditions or limitations, does not determine the end of the registration process. The purpose of publication following acceptance is to allow any person with a claim to or against the published trademark to object to registration. Registration is a process with concurrent stages, and an opposition filed within the prescribed time prevents completion of registration pending determination of the opposition.

Legislation cited (27)

Cases cited (15)

  • Fakrudin & Anor v Kampala District Land Board & Anor (High Court Civil Suit No. 570 of 2015)
  • Fenekasi Kiwanuka vs. Malikit Singh Sondh
  • Kampala Stocks Supermarket Co Ltd v Seven Days International Ltd (High Court Civil Suit No. 112 of 2015)
  • McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another (547/95) [1996] ZASCA 82; 1997 (1) SA 1 (SCA); [1996] 4 All SA 1 (A)
  • Weetabix Limited v Manji Food Industries Ltd [2015] eKLR
  • Nice House of Plastics v Hamidu Lubega (High Court Civil Suit No. 0695 of 2006)
  • SABEL BV v Puma AG
  • Nairobi Java House Ltd v Mandela Auto Spares Ltd (High Court Civil Appeal No. 13 of 2015)
  • Wagamama ltd v City Center Restaurants PLC, [1995] FSR (Ch. D)
  • Standard Signs Uganda Ltd v Fred Leo Ogwang T/a Shandard & Anor (High Court Civil Suit No. 240 of 2006)
  • Parke Davis & Company Limited v Opa Pharmacy Limited [1961] EA 556
  • Arsenal Football Club versus Matthew Reed Case C-206/01
  • Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (1999) RPC 117
  • British Sugar v James Robertson & Co Ltd
  • Obong v Kisumu Council [1971] EA 91

Full judgment

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VG Keshwala Sons Limited v Nintendo Company Limited (Trademark Registration 56916 of 2016) 2023 UGRSB 12 (23 August 2023)
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.