• Uganda Batteries sued Nile Batteries for infringement of its registered trademark
  • The court found that the plaintiff’s registered trademark was slightly different from that on which it based its claim.
  • The court concluded that the plaintiff had no locus to file the suit.

As a general rule, a registered trademark will be enforced even with alterations, as long as these do not substantially affect its identity. Section 54 of the Trademarks Act 2010 is to the effect that, where trademark use is required to be proved for any purpose, the court may accept the use of an associated registered trademark, or use of the trademark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.

This rule was put to the test in the case of Uganda Batteries Limited vs Nile Batteries Limited (HCCS 917/2018) before the High Court of Uganda.

Background

The plaintiff, Uganda Batteries Limited, brought a claim against the defendant, Nile Batteries, for alleged infringement of its registered trademark UBL for trading its batteries under the name, style and mark NBL. The plaintiff also alleged a violation of copyright subsisting in a warranty card for the batteries.

The plaintiff’s registered trademark in Class 9 was UBL. Around October 2018 the plaintiff learned that the defendant was manufacturing batteries bearing the unregistered mark NBL, accompanied by a warranty card similarly worded to its own. The plaintiff claimed that the defendant’s trademark was similar in appearance to its registered trademark.

Decision

The court found that the registered trademark of the plaintiff was slightly different from that on which it based its claim. The registered trademark was bordered by a blue rectangle shape, while the mark relied upon was bordered by a red rectangle. Apart from this colour difference, everything else was the same.

The court, relying on Section 34 of the Trademarks Act (which prohibits basing claims on an unregistered trademark), concluded that the plaintiff’s registered trademark was not the basis of its claim as alleged and that the plaintiff had no locus to file the suit. In essence, the mark presented in court by the plaintiff was treated as a different mark from that registered.

Comment

It is noteworthy that the court did not refer to Section 54 of the Trademarks Act at all; nor is it apparent from the judgment that the court was directed to that provision by counsel. Arguably, if the court had done so, the difference in colouring would have been regarded as too minor to substantially affect the identity of the mark.

The judgment effectively means that registered trademark proprietors must use their trademarks only as they are graphically represented and registered at the IP Registry. In practice, it restricts the rights acquired by trademark proprietors to modify or alter their marks as they see fit. This would go against the wording and spirit of Section 54 of the Trademarks Act.

Authored by:
Brian Kalule (Partner) and Judith Kagere (Associate)