In East African Roofing Systems Ltd v Metal Wood Industries Ltd, the registrar denied an opposition on the ground that the opponent had not raised a credible ground of objection to the registration of a trademark in Uganda.

  • The opponent opposed the registration of a mark on the grounds that how the applicant used it on the market was likely to confuse.
  • The registrar found that this was not a credible ground for opposition to the registration of a trademark
  • Resemblance in trade dress or get-up on the market is not expressly recognised as a ground for opposition under Uganda’s trademark legislation

Background

The applicant filed two applications for registration of the word-and-device mark “CROCODILE” for common metals in Class 6 and for vehicles and similar goods in Class 12. The opponent, the owner of the registered marks “GREY TIGER” and “RED TIGER” (and tiger device) in Class 6, opposed the registration on the grounds that how the applicant was using its mark on the market was likely to confuse the opponent’s customers. The opponent’s primary ground of opposition was the resemblance in the trade dress of the parties’ goods.

Analysis

In Uganda, a trademark may be opposed on the following grounds:

  1. Lack of distinctive characteristics requisite for registration, as provided under Section 9 of the Trademarks Act 2010
  2. Prohibition of registration of identical or similar trademarks under Section 25 of the act
  3. Restriction on the registration of marks contrary to the law or likely to deceive within the meaning of Section 23 of the act
  4. Unregistrable trademarks under Regulations 13 of the Trademarks Regulations 2023
  5. No possibility of concurrent use within the meaning of Section 27 of the act, and
  6. Protection of marks registered in a country of origin under Section 44 of the act.

These grounds are strictly examined in opposition proceedings and an opposition will be denied if none of these grounds is made. As resemblance in trade dress or get-up on the market is not expressly recognised as a ground for opposition, the opposition failed.

Regarding the ground of likelihood to deceive, a trademark can be deemed to be deceptively similar if it so nearly resembles another trademark that it is likely to deceive or cause confusion. In other words, the trademark is open to being used deceptively like another mark existing on the register.

Comment

Arguably, the most appropriate remedy would have been to institute an action for passing off in court, which is a tortious action concerning the goods or their get-up.

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