Wakilii

Wave Intellectual Property Inc v Agaba (Trademark Application 74413 of 2022)

Tribunal · [2023] UGRSB 10 · 2023 Opposition Allowed AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Opposition to trademark application filed by opponent claiming prior international registration and likelihood of confusion
Decision
Applicant's trademark application rejected; opponent's opposition successful

Observed later treatment

No later-treatment classification is recorded for this judgment.

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Holding

Opposition allowed. The applicant's 'Wave Express' mark was found confusingly similar to the opponent's 'Wave' mark registered internationally since 2016. The Tribunal held that the opponent satisfied all requirements under section 44 of the Trademarks Act 2010, including that the UK (country of origin) accords Uganda reciprocal protection under the Paris Convention framework. The applicant's application for registration was rejected.

Outcome

Applicant's trademark application rejected; opponent's opposition successful

Facts

On 7 February 2022, Agaba Ernest applied to register the trademark 'Wave Express' in class 36 for financial services, real estate services and insurance services. Wave Intellectual Property Inc, a US company with the 'Wave' mark registered in 52 countries since 2016 (first registered in the UK on 20 September 2016), filed opposition on 7 April 2022. The opponent's mark was not registered in Uganda; its applications filed on 21 March 2022 were rejected by the examiner because the applicant's mark was pending. The opponent operates in Uganda through Wave Transfer Ltd under licence, providing mobile money services. The opponent claimed its mark was well-known internationally and entitled to protection under the Paris Convention and section 44 of the Trademarks Act 2010.

Issues

  1. Whether the applicant's mark is confusingly similar to the opponent's mark?
  2. Whether the applicant is capable of distinguishing the applicant's services from those of the opponent?
  3. Whether the applicant's mark was filed in good faith?
  4. Whether the opponent's mark is internationally recognized?
  5. Whether the opponent is entitled to protection under section 44 of the Trademarks Act 2010 for marks registered in the country of origin?

Orders

  • Opposition allowed.
  • Applicant's trademark application no. UG/T2022/074413 for 'Wave Express' in class 36 rejected.
  • Each party to bear its own costs.

Rules and key headnotes

Trademarks — Likelihood of Confusion — Visual, Phonetic and Conceptual Similarity
In assessing likelihood of confusion between trademarks, the overall impression created by the marks must be considered globally, taking account of visual, aural and conceptual similarities, with particular regard to the dominant and distinctive elements of each mark, as perceived by the average consumer who rarely makes direct comparisons and relies on imperfect recollection.
Trademarks — Opposition — Requirements under Section 44 Trademarks Act 2010
For an opposition to succeed under section 44 of the Trademarks Act 2010, the opponent must prove: (1) the opposed mark is identical with or nearly resembles a trademark already registered; (2) that registered mark is in respect of the same or similar services; (3) the mark is registered in Uganda or in the country from which the services originate; (4) the opponent undertakes to register the mark in Uganda within three months; and (5) the country of origin accords Uganda reciprocal treatment.
Trademarks — Well-Known Marks — Domestication of Paris Convention Article 6bis
Uganda domesticated Article 6bis of the Paris Convention on protection of well-known marks only under section 47 of the Trademarks Act 2010 for defensive registration of exceptionally well-known marks, setting a higher standard than the Convention requires. Protection for well-known marks cannot be claimed as a basis for opposition under section 44 where the legislature has not expressly extended such protection to refusal of registration.
Trademarks — Reciprocal Treatment — Section 44(4) Trademarks Act 2010
The requirement under section 44(4) that the country of origin accord Uganda the same treatment does not require express bilateral mention of Uganda in foreign legislation. It is sufficient that both countries are parties to the Paris Convention and have domesticated its principles in their respective trademark legislation, creating a multilateral framework for reciprocal protection.
Trademarks — Territorial Principle — International Protection
Intellectual property protection is territorial and rights do not extend beyond the territory of the sovereign state which granted them. The exception is the universality principle under the Paris Convention, which permits protection of well-known marks even where not registered in the country concerned, subject to how the treaty has been domesticated in municipal law.

Legislation cited (13)

Cases cited (3)

  • Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24
  • Eurocermex v OHIM (Case C-286/04 P) [2005] ECR I-5797
  • Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015)

Full judgment

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

Wave Intellectual Property Inc v Agaba (Trademark Application 74413 of 2022) 2023 UGRSB 10 (7 June 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.