The decision of the registrar of Trademarks in Procter & Gamble Company v Momeasy Enterprises Ltd shows that a permitted user of a mark internationally associated with a different owner can apply for registration of the trademark if it meets the requirement of distinctiveness. It also highlights that copyright ownership in a mark is not grounds for preventing registration, since a copyright infringement claim can be established only in court proceedings and not in opposition proceedings before the registrar of trademarks.

• Procter & Gamble (P&G) opposed the registration of the figurative marks MOMEASY in Classes 10 and 21 based on its registered heart-shaped logo
• The registrar found that the conflicting marks were not confusingly similar
• The registrar does not have jurisdiction to establish copyright infringement in trademark opposition proceedings

Background

Procter & Gamble (P&G), an American multinational corporation specialising in the manufacture and sale of personal care and hygiene products, objected to the application for registration by Momeasy Enterprises Ltd of the figurative marks MOMEASY in classes 10 and 21 because the device element was confusingly similar to its registered heart-shaped logo.

P&G contended that the confusion arose because the letter ‘M’, a dominant element of Momeasy’s trademark, resembled P&G’s heart-shaped logo, a registered trademark in Uganda. P&G also contended that the mark applied for lacked the distinctiveness necessary for registration as the mark was internationally associated with a different owner. Lastly, P&G claimed that it had copyright over the work in the Pampers logo; therefore, registration of the MOMEASY mark would amount to copyright infringement under the Copyright and Neighbouring Rights Act 2006 and was contrary to the law.

Decision

On the likelihood of confusion, the registrar found that, when analysed, the mark applied for consisted of a fanciful word, ‘Momeasy’, with a combination of colours, and that the ‘M’ element could not be separated from the mark for it to be confused with the heart-shaped logo that made up P&G’s mark.

The registrar explained that, in determining the likelihood of confusion, the ‘dominant element’ test is applied after analysing all other components of the mark and whether they are negligible in the overall impression. It is only when these components are deemed to be negligible that the dominant aspect is analysed. The registrar concluded that the marks were not similar based on the general impression created by the mark applied for.

Concerning the argument that the mark was internationally associated with a different entity, the registrar found that a permitted user can register a trademark in Uganda if the mark meets the requirement of distinctiveness. Under the Trademarks Act 2010, for one to be a permitted user, such a person or entity must be entered as such in the register of trademarks (in this case, it was not clear whether Momeasy was a permitted user by registration in Uganda or because of rights accruing from registration in another country).

Lastly, on the copyright infringement issue, it was found that, in trademark opposition proceedings, the registrar does not have jurisdiction to establish copyright infringement; as such, copyright ownership in a mark cannot serve as a ground for proving that registration is contrary to the law. Copyright infringement is a preserve of a court of law and cannot be established by the registrar in trademark opposition proceedings.

Authored by:
Judith Kagere (Associate)