The IP Registry registered Liberty ICD’s LIBERTY mark in Class 36 despite a previous application by Liberty Group for the same mark in the same class. As both parties had honest claims to the mark under the law, the appropriate remedy was for both parties to be granted concurrent use of the mark. Liberty Group was not without fault, as it did not complete or revive its application until after eight years had passed

Background

Liberty Group Ltd applied to register the word mark LIBERTY in Class 36 on 16 April 2012. On 2 April 2013, Liberty ICD Ltd also applied to register the same mark in the same class, covering the same description of services. Liberty ICD’s registration was granted and a certificate of registration was issued without consideration of Liberty Group’s prior application.

Liberty Group commenced cancellation proceedings contending that Liberty ICD’s trademark was registered in error and that it contravened the Trademarks Act 2010, which prohibits the registration of identical or similar trademarks. Liberty ICD defended the registration by contending that its mark was validly registered and that all procedures had been complied with.

Decision

The registrar decided that the error was occasioned by the IP Registry, as it allowed Liberty ICD’s trademark application despite Liberty Group’s prior application. With both parties having honest claims to the trademark under the law, the appropriate remedy was for both parties to be granted concurrent use of the trademark. The registrar deemed these to be special circumstances for concurrent use of the trademark by both parties under the act, which permits the registrar or the court to allow the registration of the same mark by more than one owner in case of honest concurrent use or other special circumstances.

The registrar then imposed the condition that Liberty Group should amend its application and modify its trademark in a manner that ensures co-existence with Liberty ICD’s mark without causing confusion. This was subject to the registrar’s examination of the amended trademark.

Further, the registrar stated that Liberty Group was not entirely without fault as it did not complete or revive its trademark application until after eight years had passed, during which Liberty ICD had registered the mark and enjoyed rights therein in good faith.

Comment

Liberty Group’s application was first in time and should have been considered by the registrar when examining Liberty ICD’s application. However, since this error originated from the IP Registry, perhaps the registrar tried to save face by creating a win-win situation for both parties through concurrent use of the trademark.

The registrar pointed out that there had been a delay on Liberty Group’s part in completing the trademark application process. This, in turn, inadvertently threatened Liberty ICD’s rights in the trademark, even though the company had operated for almost eight years without worry. The delay on Liberty Group’s part meant that it had not diligently followed the process within the relevant statutory timeline. Consequently, Liberty ICD could not suffer detriment by having its trademark removed from the register due to Liberty Group’s inordinate delay.

It seems that, in this ruling, the IP Registry emphasised that trademark practitioners should be vigilant and ensure that the trademark registration process is completed within the 12 months provided for under the act without default on their part. Liberty Group, as the first-in-time applicant, would have been well within its rights to seek the cancellation of Liberty ICD’s trademark had it completed its registration before the 12-month period expired, or had there been a formal follow-up with the registry by Liberty Group or its agents within this time.

The ‘first in time, first in right’ rule applies to trademark registrations in Uganda. This means that a pending application to register a trademark can supersede a subsequent registration if it is completed or promptly followed up during the statutory 12-month timeframe. This ruling also illustrates an increase in the exercise of the registrar’s discretion to achieve just ends, as opposed to a rigid application of the statute. By prescribing the remedy of concurrent use, the registrar deemed that it would be unfair to cancel Liberty ICD’s trademark, which had been in use for eight years since its registration.

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