Passing Off and Distinctiveness in Trade Marks: A Comparative Analysis of Two Landmark Ugandan Cases.

Abstract.

This abstract provides a comparative analysis of two landmark cases in Uganda, namely A-Class Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB Civil Suit No. 355 of 2020[1], and Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016)[2]. The focus of the analysis revolves around the legal concepts of Passing Off and Distinctiveness in Trade Marks.

The first case involves a dispute between A-Class Funeral Management Ltd v A-Class Funeral Services (U) Ltd, presenting a subtly complex exploration of the issues surrounding Passing Off and the determination of distinctiveness in the context of trade marks. The analysis delves into the facts of the case, legal arguments presented, and the precedent-setting implications of the court's decision in the Civil Suit No. 355 of 2020.

The second case, Nairobi Java House Ltd v Mandela Auto Spares Ltd, further enriches the comparative study by offering insights into the application of legal principles related to Passing Off and Distinctiveness. This article examines the court's rationale in the decision rendered on 9 February 2016, highlighting key elements that shaped the outcome of the case.

Through a comprehensive comparative analysis of these two landmark cases, this abstract seeks to provide a deeper understanding of the evolving legal landscape surrounding Passing Off and Distinctiveness in Trade Marks within the Ugandan jurisdiction. It explores the nuances, precedents, and legal reasoning that contribute to the emerging and ripe discussion of jurisprudential development of intellectual property law in the Uganda. It also identifies the challenges and opportunities for the development of trade mark law and practice in Uganda, and proposes some recommendations for improving the enforcement and registration of trade marks in the country.

Introduction. Passing off and distinctiveness are two key concepts in trade mark law that aim to protect the goodwill and reputation of a business from being exploited or damaged by another business using a similar or identical trade mark. In Uganda, trade mark law is governed by the Trademarks Act 2010, which provides for the registration and enforcement of trade marks, as well as the remedies for infringement and passing off. However, the application and interpretation of the law is not always clear or consistent, and there are many challenges and gaps in the legal framework and practice of trade mark protection in Uganda.

This article seeks to provide a deeper understanding of the evolving legal landscape surrounding passing off and distinctiveness of trade marks in Uganda, by comparing and contrasting two landmark cases that have addressed these issues: A-Class Funeral Management ltd v A-Class Funeral Services (U) ltd and URSB Civil Suit No. 355 of 2020, and Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016). These cases illustrate the different approaches and arguments adopted by the courts in determining whether there is a likelihood of confusion or deception among the consumers, and whether the trade marks in question are distinctive or generic.

This article also analyzes the implications of the judgments for the protection of trade marks and the prevention of unfair competition in Uganda, and discusses the challenges and opportunities for the development of trade mark law and practice in Uganda. Finally, this article offers some recommendations for improving the enforcement and registration of trade marks in the country.

Passing off or Distinctiveness as seen in the case of A-Class Funeral Management ltd v A-Class Funeral Services (U) ltd and URSB Civil Suit No. 355 of 2020

Before we delve into the concept of passing-off, the facts briefly are, The case was filed by A-Class Funeral Management ltd (the plaintiff), a company that provides funeral services and products in Uganda, against A-Class Funeral Services (U) ltd (the defendant), another company that offers similar services and products, and the Uganda Registration Services Bureau (URSB), the government agency responsible for registering and regulating businesses in Uganda.

The plaintiff, A-Plus Funeral Management Ltd, filed a joint and several claim against the defendants, A-Class Funeral Services (U) Ltd and the Uganda Registration Services Bureau (URSB). The plaintiff sought declaratory orders asserting that the 1st defendant's name constitutes a pass-off of the plaintiff's business name, alleging wrongful and negligent registration. Additionally, the plaintiff sought a permanent injunction against the use of the name "A-Class Funeral Services (U) Ltd" and costs of the suit.

The plaintiff, being in operation since 2003 under the name A-Plus Funeral Management Ltd, argued that it had acquired significant goodwill in its business name and services, known to the public over 17 years. In September 2020, the plaintiff discovered the registration of another company, A-Class Funeral Services (U) Ltd, which it deemed confusingly similar. Despite objections, the plaintiff received no positive response.

The 1st defendant defended itself through, claiming adherence to legal procedures for company registration, denial of any intention to pass off the plaintiff's name, and asserting distinctiveness in its business operations. The 2nd defendant, URSB, as a regulatory body responsible for registration, contended that the registration adhered to legal requirements and denied negligence.

Agreed facts included the incorporation dates of both companies and their respective names. The agreed issues for resolution encompassed whether the 1st defendant's name constituted infringement and passing off, the liability of the 1st defendant, whether the plaintiff's claim raised a cause of action against the 2nd defendant, the negligence of the 2nd defendant in registration, and the available remedies.

The legal representation for the parties consisted of Counsel Luke Kasakya for the plaintiff, Counsel Kiwa Francis Frank for the 1st defendant, and Counsel Birungi Dennis for the 2nd defendant. The case ultimately revolves around the determination of passing off, infringement, and negligence in the context of the defendants' business name registration.

HOLDING

Whether the 1st Defendant’s name is an infringement and constitutes passing off of the plaintiff’s name

Justice Musa Ssekaana referred to Sections 36 and 37 of the Companies Act 2012, emphasizing the registrar's role in preventing undesirable or misleading names during registration. Notably, the court underscored that the registration process is not based on phonetic similarity but rather on the potential for names to mislead the public.

He held as follows; The two company names as registered are not in my view similar with the exception of only letter “A” and word “Funeral”. A-Class Funeral Services (U) Ltd and A-Plus Funeral Management Ltd. The plaintiff tried to make objections as to the registration of the 1st defendant but the 2nd defendant rejected the complaint since in their opinion the names are not similar or likely to confuse or mislead as contended by the plaintiff.

Justice Ssekaana highlighted the significance of guarding against double registration, citing the Pentecostal Assemblies of God case, which emphasized the potential for confusion among the public due to identical names. The plaintiff argued that the phonetic similarity between the names would confuse the funeral service industry's customers. However, the court disagreed, asserting that customers in this industry are generally attentive and discerning.

He held as follows, “This court does not agree that the similar phonetic sound is likely to cause confusion to the public in the funeral service industry. The customer in the nature of business is generally attentive, discerning, well-informed, reasonably observant and circumspect. Such a user is less likely to be confused as to particulars of a funeral service provider than an ordinary mourner or bereaved customer or someone procuring services on behalf of a bereaved client. The issue of confusion of marks, names at issue must not be considered from the point of view of the average hurried or confused consumer having an imperfect recollection of the opponent’s mark or name who might encounter the name of the plaintiff. That does not mean a rash, careless or unobservant purchaser(customer) on one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived. The standard is not that of people “who never notice anything” but of persons who take more than “ordinary care to observe that which is staring them in the face”. See Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 page 803-811

Addressing passing off, the court clarified that it is a tort rooted in common law, preventing goods or businesses from being misrepresented as those of another. Justice Ssekaana stressed the importance of proving a false misrepresentation and concluded that the two companies' names, A-Plus Funeral Management Ltd and A-Class Funeral Services (U) Ltd, were distinct and unlikely to cause confusion among reasonable customers.

He held as follows, “The basis of the cause action lies squarely in misrepresentation, for its underlying rationale is to prevent commercial dishonesty. The tort of passing off protects the business of the plaintiff with its many facets: its assets, goodwill and reputation. It stops persons gaining a commercial advantage through wrongfully taking the attributes of another’s business if it causes or likely to cause that other person’s business some damage. See ConAgra Inc v McCain (Aust) Pty Ltd (1992) 23 IPR 193 at 231”

No man is entitled to represent his goods as being the goods of another, and no man is permitted to use any mark, sign or symbol, device, or other means whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such a purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.

The basis of a passing off action being a false misrepresentation by the defendant, it must be proved in each case as a fact that the false representation was made. In this case, there two companies duly incorporated under the laws of Uganda-Companies Act 2012. As found earlier the names in court’s view are not similar and do not cause any confusion to any reasonable mourner or customer who may be observant. No prospective customer in the funeral industry would mistake A-Plus Funeral Management Ltd for A-Class Funeral Services Ltd.

The two trade names of the plaintiff and 1st defendant as shown earlier are distinct and the plaintiff’s submission that they similar phonetic sound has been found baseless. It is very true that the reputation and goodwill of the business which often attached to the trade name will be protected by courts. Equity would intervene to provide relief to a plaintiff whose customers had been misled by his competitors.

The court dismissed the plaintiff's claim, ruling that the 1st defendant's name did not constitute passing off. Consequently, no costs were awarded between the plaintiff and the 1st defendant, while the 2nd defendant (URSB) was granted half of the costs. The judgment, delivered on June 30, 2023, solidifies the court's stance on the distinctiveness of the companies' names and their potential to cause confusion in the funeral service industry.

Key Takeaways on Passing off under Trademarks in Uganda.

1. Registration Process and Desirability:

Ø The registration of company names in Uganda is guided by the Companies Act.

Ø Names are approved based on the desirability of the name, as per Section 36 of the Companies Act.

2. Role of the Registrar of Companies:

Ø The Registrar of Companies, according to Section 36, may reserve a name pending registration or direct a change if it gives a misleading indication of the company's activities likely to cause harm to the public (Section 37).

3. Preventing Double Registration:

Ø The law guards against double registration, aiming to protect the owners of the first registered company and prevent confusion among the public.

4. Distinctiveness Over Phonetic Similarity:

Ø The registration of companies is not determined solely on phonetic similarity. The court emphasizes that names must be analyzed for potential misleading effects on the public.

5. Standards for Confusion:

Ø The court sets a high standard for confusion, asserting that customers in the funeral service industry are generally attentive, discerning, and well-informed.

6. Passing Off as a Tort:

Ø Passing off is recognized as a form of tort based on common law, aimed at preventing commercial dishonesty.

Ø The tort protects the business's assets, goodwill, and reputation, preventing others from gaining a commercial advantage through misrepresentation.

7. False Misrepresentation and Commercial Dishonesty:

Ø Passing off is based on false misrepresentation, with the underlying rationale being the prevention of commercial dishonesty.

Ø It protects businesses from others wrongfully taking attributes that may cause damage to the original business.

8. Burden of Proof:

Ø The plaintiff in a passing off action has the burden of proving that the defendant's use of a similar name is likely to mislead the public.

9. Confusion Standard:

Ø The court emphasizes that confusion must be determined from the perspective of a reasonable, attentive, and observant customer in the relevant industry.

10. Consideration of Average Intelligence:

Ø The standard for confusion is not that of people who "never notice anything" but rather of individuals who take more than ordinary care to observe what is in front of them.

11. Tolerance for Some Confusion:

Ø Courts acknowledge that some degree of confusion may exist in the market. The law is willing to tolerate this, particularly in cases where two independent rights or liberties collide.

12. Distinctiveness of Trade Names:

Ø An action for passing off may succeed where integral parts of the names are synonymous. Courts are willing to accept small differences to avert confusion.

13.  Effectiveness of Company Name Registration:

Ø While the Companies Act attempts to prevent registration of names closely resembling existing companies, it may not be entirely effective. Passing off actions can still be launched to protect businesses with established names and reputation.

14. Outcome:

Ø In this specific case, the court concluded that the names A-Plus Funeral Management Ltd and A-Class Funeral Services (U) Ltd were not confusingly similar, and the plaintiff's claim of passing off was not sustained.

This judgment provides valuable insights into the standards applied by Ugandan courts in cases of passing off under trademarks, emphasizing the importance of distinctiveness, potential for confusion, and the need for evidence to support claims.

Challenges for the Development of Trademark Law and Practice in Uganda

1. Interpretation of Similarity: The case reveals challenges in interpreting the similarity between trade names. The court's emphasis on potential misleading effects rather than phonetic similarity may introduce subjectivity and lack of clarity in determining similarity.

2. Registration Process Standards: The case highlights challenges in ensuring that the registration process effectively prevents names likely to cause confusion. The efficacy of the process in safeguarding against double registration needs continuous scrutiny and improvement.

3.   Lack of Clear Guidelines: The absence of clear guidelines on what constitutes infringement and passing off can create challenges for businesses and regulatory bodies. Clarity in legal standards is essential for consistent decision-making.

4. Burden of Proof: The burden of proving misrepresentation and confusion in passing off cases can be challenging for plaintiffs. There may be a need for clearer standards and evidentiary requirements to streamline legal proceedings.

5.    Court's Understanding of Industry Standards: The court's assertion about the funeral service industry's customers being attentive may not be universally applicable. Industry-specific standards and consumer behavior should be carefully considered to avoid generalizations.

Opportunities for the Development of Trademark Law and Practice in Uganda.

1.  Guidelines for Desirability: Opportunities exist to enhance guidelines on the desirability of names during the registration process. Clearer criteria for determining whether a name is likely to cause confusion or harm to the public can contribute to more robust decision-making.

2.  Continuous Legal Education: There is an opportunity for continuous legal education, especially for those involved in the registration and enforcement of trademarks. This can enhance the understanding of legal nuances and improve the overall quality of decision-making.

3.  Refinement of Legal Standards: The case offers an opportunity to refine legal standards for passing off and infringement. This includes specifying factors that contribute to confusion and providing a more structured approach to evaluating similarity between trade names.

4. Consumer Behavior Studies: Opportunities exist to conduct studies on consumer behavior within specific industries, such as the funeral service sector. Understanding how customers perceive and interact with similar trade names can inform legal standards and court decisions.

5. Alternative Dispute Resolution Mechanisms: Implementing or promoting alternative dispute resolution mechanisms can be an opportunity to resolve trademark disputes more efficiently. This could include mediation or arbitration to reduce the burden on the judicial system.

6. Strengthening Regulatory Oversight: There is an opportunity to strengthen the regulatory oversight of trademark registrations. This involves ensuring that registrars have the necessary tools and guidelines to prevent undesirable registrations effectively.

7. Harmonization with International Practices: Uganda can explore opportunities to harmonize its trademark practices with international standards. Aligning with global best practices can enhance the country's reputation for intellectual property protection, potentially attracting international businesses.

8.  Clarity in Legal Standards: The case provides an opportunity to bring greater clarity to legal standards for passing off and trademark infringement. Well-defined standards contribute to legal predictability and fairness.

9.  Awareness Programs: Implementing awareness programs about trademark laws, passing off, and the registration process can benefit both businesses and the public. This can contribute to a better-informed business environment.

10.  Review of Companies Act: There is an opportunity to review and refine relevant sections of the Companies Act to address emerging challenges in trademark registration and infringement. Legal frameworks should evolve to keep pace with changes in business dynamics.

In conclusion, addressing these challenges and seizing opportunities can contribute to the development of a more robust trademark law and practice in Uganda. This involves continuous improvement of legal standards, refining registration processes, and promoting awareness and education about trademark-related matters.

A look into the second case Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016).

The case was an appeal by Nairobi Java House Ltd (the appellant), a Kenyan company that operates a chain of coffee houses and restaurants under the trade mark JAVA HOUSE, Arising from the decision of the Registrar of Trademarks dated 21st May 2015 in the matter of a trademark opposition lodged by Mandela Auto Spares Parts Ltd to the Registrar of Trademarks. Application No. 48062/2013 ‘JAVA HOUSE AND JAVA SUN’ and trademark application No 48063 ‘NAIROBI JAVA HOUSE’ In Class 43 in the name of NAIROBI JAVA HOUSE LTD. The High Court of Uganda set aside the decision of the Registrar dated 21st May 2015  The claim of trade mark infringement and passing off against Mandela Auto Spares Ltd (the respondent), a Ugandan company that runs a restaurant and bar under the name JAVA CAFE.

The Appellants argue that the Registrar made significant errors in evaluating their trademark case. They claim that the Registrar failed to adequately compare the Appellants' trademarks with those of the Respondents, both aurally and conceptually. Additionally, they assert that the Registrar incorrectly categorized both parties' trademarks as mere word marks. The Appellants contend that the term "Java" should have been considered descriptive, lacking distinctiveness, and eligible for registration with certain disclaimers under specific sections of the Trademarks Act 2010. Furthermore, they argue that the Registrar erred in not recognizing the absence of material similarity between the trademarks and in considering irrelevant matters and inadmissible evidence when assessing the likelihood of confusion, leading to an erroneous conclusion.

In response to the appeal, the Respondent's Counsel opposed it, highlighting that the Assistant Registrar had already upheld the Respondent's objection to the Appellant's application for trademark registration on May 21, 2015. The Appellant had appealed this decision on nine grounds on June 4, 2015. Attempting to amend the grounds of appeal in a subsequent Miscellaneous Application (Number 580 of 2015) was not allowed.

Despite the disallowed amendment, the Appellant proceeded to abandon its initial grounds of appeal, raising concerns that it might introduce new grounds. The Respondent's Counsel objected to the newly submitted grounds, arguing that they deviated from the notice of motion, which specifically outlined the grounds of appeal. The notice of motion focused on matters such as the meaning of the word "Java," the source of origin of services, the reasonable consumer, and judicious exercise of discretion, concurrent usage, and trade competition. The Respondent's Counsel contends that the Appellant's submissions do not align with the specified grounds in the notice of motion.

Justice Christopher Madrama Izama observed as follows that, the background of the appeal involves Nairobi Java House Ltd, which applied for the registration of trademarks like "Java House," "Java Sun," and "Nairobi Java House Coffee & Tea." The Registrar of Trademarks disallowed these applications, leading to the appeal. The Appellant, having used the word "Java" in Kenya, sought to expand its business into Uganda.

The dispute arises from the Assistant Registrar's decision, considering the Appellant's applications and the opposition by Mandela Auto Spares Ltd, the Respondent. The Respondent argued ownership of various "Cafe Javas" trademarks and opposed the registration based on similarity, lack of distinctiveness, and potential deception.

The Respondent's objections included claims of phonetic, confusing, and deceptive similarity, lack of distinctiveness, and the likelihood of deception. The Appellant countered, asserting that "Java" is a common term, referring to coffee, and that they had a well-known mark with distinctiveness. The Appellant also emphasized differences between the marks and claimed the ability for honest concurrent use.

The decision of the Registrar, as discussed in the appeal, allegedly overlooked the prior registration of the Appellant's trademarks in Nairobi, Kenya, influencing the legal basis for the consideration of the registration issues in Uganda.

In the consideration of the issues, the Assistant Registrar took into account the fact that the opponent, Mandela Auto Spares Ltd, is a registered owner of the trademark "Cafe Javas" with a distinctive device (steaming cup) over the right side of the word ‘Javas’, registered in class 43. The opponent claimed usage of the marks on restaurant services, the same services for which the Appellant sought registration.

Both parties sought registration in class 43 for restaurant services, and the Registrar examined the descriptiveness of the term "Java" in the context of distinguishing the opponent's services. The Registrar concluded that "Java" is not generic for coffee shops or restaurants based on the evidence and that it serves to distinguish services, not merely describe them.

The Registrar also considered the similarity of trademarks under section 25(2) of the Trademarks Act 2010, which prohibits the registration of trademarks identical or resembling those belonging to a different owner already on the register for the same services. The issue of whether the word "Java" is descriptive of services in the food and drink trade in Uganda was a key focus of the appeal.

The decision also touched on the likelihood of confusion, examining whether the Appellant's trademark closely resembled that of the opponent, and discussions centered on the principles for assessing trademarks for potential confusion.

The Appellant's application was for registration in class B, and the Registrar applied the criteria for registration under section 10 of the Trademarks Act 2010. This section emphasizes the capability of distinguishing goods or services as a requisite for registration under Part B, considering the inherent capability and actual use of the trademark.

In interpreting the Trademarks Act, the Registrar emphasized the clarity and unambiguity of the statute and the court's role in conforming to the written law. The controversy revolved around section 10(2) of the Trademarks Act 2010, which requires a trademark to be capable of distinguishing particular services. The discretionary power of the Registrar or court to consider the inherent capability and actual use of the trademark was highlighted under section 10(3).

Court observed that The first basic criteria are therefore the capability to distinguish services. According to David I. Bainbridge in his textbook on Intellectual Property Sixth Edition at page 597 to be capable of distinguishing goods and services of one undertaking from another, the trademark must say or be capable of saying on its face that the goods or services come from X rather than from Y or Z. The trademark is an indicator of origin of the goods or services. It is a guarantee of trade origin or a badge of origin of the goods or services. The statute itself provides for marks which may or may not be registered

The court observed that the Registrar emphasized the significance of the term "Java" as the most prominent element in the contested trademark. The Respondent, having registered "Cafe Javas," opposed the Appellant's registration of "Nairobi Java House" based on the commonality of the word "Java." The Registrar concluded that this common element made the trademark inherently capable of distinguishing services, addressing the issue of inherent capability in relation to the Respondent's mark.

In response, the Appellant argued that the word "Java" is not an original coinage, contending that it refers to coffee and places where various coffee varieties are served. The Appellant, Nairobi Java House, highlighted its chain of coffee houses and exporters, emphasizing the extensive registration, advertisement, and use of terms like "Java," "house," and "Java Sun." Additionally, the Appellant claimed a well-known mark that distinguished its services.

The Registrar's decision was scrutinized, particularly regarding the evaluation of whether "Java" is a common English noun synonymous with coffee shops and restaurants. The grounds of appeal challenged the Registrar's findings, asserting an error in the assessment of the word "Java" and its descriptive nature. The analysis delved into the requirements for registration under sections 8, 9, and 10 of the Trademarks Act 2010.

The Registrar's determination that "Java" is not inherently descriptive of food and drink services in Uganda faced criticism. The appeal argued that the Registrar overlooked evidence showing the term's association with coffee and restaurants globally. Additionally, the Appellant asserted that the word "Java" had distinctiveness and was, therefore, registrable under section 9 of the Trademarks Act.

Furthermore, the critique extended to the Registrar's failure to consider section 26(1)(b) of the Trademarks Act, which addresses the prohibition of registration of a trademark containing a common name. The appeal contended that the word "Java," despite its geographical reference to an Indonesian island, should have been recognized as common in the context of class 43 services.

Lastly, the legal framework for distinctiveness under sections 9 and 10 of the Trademarks Act was emphasized. The discussion highlighted the statutory definition of distinctiveness and the criteria for determining whether a mark is inherently adapted to distinguish goods or services, considering both the intrinsic qualities and the actual use of the trademark.

Court held that, First of all section 8 provides of the Trademarks Act 2010 provides that that a trademark relating to goods or services shall be registered in respect of particular goods or classes of goods. Secondly section 9 provides that in order for a trademark other than a certification mark to be registered in Part A of the register, the trademark shall contain or consist of at least one of the essential particulars. The basic difference between section 9 and section 10 on distinguishing is that under section 9 the trademark has to be distinctive and is registered under Part A. Under section 10 it should be capable of distinguishing the goods or services even if an owner had first been registered under Part A and it is registered under Part B.

In summary, the appeal scrutinized the Registrar's handling of the distinctive nature of the word "Java" and its suitability for registration, delving into the statutory provisions and challenging the Registrar's conclusions on inherent capability and descriptive characteristics.

In conclusion, court observed as follows,

In light of the shared use of the term "Java" in both the Appellant's and the Respondent's services, the Appellant's grounds 2, 3, and 4 are valid and accepted. It is crucial to note that the Appellant appropriately disclaimed the word "Java" in accordance with section 26 of the Trademarks Act 2010.

Despite the absence of specific arguments regarding the implications of the Appellant's prior registration in Kenya during the proceedings, an exhaustive evaluation reveals its significance. The Registrar's failure to consider this pivotal matter is a substantial omission. The principles outlined in Order 43 rule 20 of the Civil Procedure Rules, derived from legal precedents, empower the court to reconsider the decision based on a comprehensive analysis of evidence.

The Paris Convention for the Protection of Industrial Property, to which both Uganda and Kenya are parties, addresses the registration of foreign marks. Article 6 of the Convention emphasizes the independence of protection of a mark registered in one country from marks in other countries, maintaining the principle of territoriality.

Considering the Convention's provisions, it becomes evident that the Registrar overlooked the Appellant's prior registration in Kenya, a material factor for consideration. The length of time a mark has been in use, as stipulated in the Convention, is a relevant aspect, supporting the Appellant's case.

Domestically, the Ugandan Trademarks Act 2010 aligns with the Paris Convention principles under sections 44 and 45. These sections emphasize that the mark registered first in time takes precedence, promoting freedom of movement of goods and services within the East African Community.

Section 45 further grants the court authority to remove a later-registered trademark if it closely resembles a foreign-registered mark. The East African Community Treaty, under article 7, promotes free movement of goods and services, emphasizing the principle of complementarity.

In essence, the Registrar's decision contradicts the principles of the East African Community, restricting the registration of a trademark previously registered in Kenya, thus hindering the free movement of services. The issue of similarity of marks or likelihood of confusion is relevant, particularly in the context of an application for the registration of a foreign mark, addressing grounds 1, 5, 6, 7, and 8 of the Appellant's Notice of Motion.

KEY TAKE AWAYS OF THE CASE ON DISTINCTIVENESS UNDER TRADEMARK LAW:

1.  Shared Use of "Java": The court acknowledged the shared use of the term "Java" in both the Appellant's and the Respondent's services, accepting grounds 2, 3, and 4. Notably, the Appellant appropriately disclaimed the word "Java" in accordance with section 26 of the Trademarks Act 2010.

2.  Prior Registration in Kenya: Despite the lack of specific arguments during the proceedings, the court stressed the significance of the Appellant's prior registration in Kenya. The Registrar's failure to consider this crucial matter was deemed a substantial omission.

3.  Legal Framework Compliance: The Registrar's decision was criticized for contradicting the principles of the East African Community. The court highlighted that it restricted the registration of a trademark previously registered in Kenya, hindering the free movement of services, which goes against the East African Community Treaty.

4.  Paris Convention and Domestic Alignment: The case aligns with the Paris Convention, emphasizing the precedence of the mark registered first in time. Sections 44 and 45 of the Ugandan Trademarks Act 2010 also align with the Paris Convention, promoting freedom of movement of goods and services within the East African Community.

5.  Impact on Likelihood of Confusion: The issue of similarity of marks and likelihood of confusion, particularly in the context of registering a foreign mark, was highlighted. This addressed grounds 1, 5, 6, 7, and 8 of the Appellant's Notice of Motion.

Court stated as follows,  As far as likelihood of confusion is concerned there was no survey which had been conducted. The opinion of two deponents was insufficient to reach the conclusion that the registrar reached of confusion of members of the public. Mohideen relied on the opinion of one customer Mr. Senyondwa whose affidavit he attached. Secondly he relied on a newspaper article written by one Rita. There is no evidence that Rita interviewed anybody and her comments were her own opinion. The concept of an average consumer must import representativeness of the opinion or likelihood of confusion. There is no evidence of the kind of clientele the Respondent has and who is a reasonable customer. The registrar erred to rely on the evidence of Mohammad Mohideen after finding that there was no evidence of reference to the restaurants of the respondent as Javas by an average or reasonable customer. Furthermore the trademarks of parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported.

In summary, the court's decision underscored the importance of considering prior registrations, adhering to legal frameworks, and promoting the principles of free movement of goods and services in trademark disputes. The case provides valuable insights into the nuanced evaluation of distinctiveness and the broader implications for cross-border trademark registration within regional economic communities.

Challenges for the Development of Trademark Law and Practice in Uganda:

1. Overlooked Prior Registrations: The above case highlighted a challenge wherein important aspects like prior registrations could be overlooked during the examination process. This oversight poses a risk to the accuracy and fairness of trademark decisions.

2. Need for Legal Awareness: The case emphasized the importance of legal awareness and thorough understanding of trademark laws among both applicants and authorities. Lack of awareness may lead to misinterpretation of statutes and incorrect decisions.

3. Inadequate Consideration of International Treaties: The case pointed out a potential challenge where international treaties, such as the Paris Convention, might not be adequately considered in the evaluation of trademark applications. This could hinder harmonization with global trademark standards.

4. Limitations in Legal Framework: Despite alignment with international conventions, there may be limitations in the existing legal framework. Amendments and updates may be required to address evolving challenges and ensure the effective protection of trademarks.

5. Impact on Regional Integration: The decision raised concerns about the potential hindrance to the free movement of goods and services within the East African Community. Challenges in aligning national trademark practices with regional integration goals may affect cross-border business operations.

Opportunities for the Development of Trademark Law and Practice in Uganda:

1. Enhanced Legal Training: The case underscores the opportunity for enhanced legal training for trademark examiners and practitioners. This can improve the understanding of legal nuances, leading to more accurate and fair trademark decisions.

2. Harmonization with International Standards: Uganda has the opportunity to strengthen its legal framework by further aligning with international standards and conventions. This can enhance the country's global standing in intellectual property protection and encourage international business.

3. Efficient Use of Legal Discretion: The case highlighted the importance of the efficient use of legal discretion by trademark examiners and authorities. Proper exercise of discretionary powers can lead to fair decisions that consider all relevant factors, including prior registrations.

4. Public Awareness Campaigns: Opportunities exist for public awareness campaigns to educate businesses and the public about the importance of trademark registration. This can contribute to a culture of intellectual property awareness and compliance.

5. Facilitation of Regional Trade: Uganda can explore opportunities to streamline its trademark processes in alignment with regional economic communities. This involves facilitating the registration of trademarks across East African Community member states, promoting smoother regional trade.

In conclusion, addressing these challenges and seizing opportunities can contribute to the development of a robust trademark law and practice in Uganda, fostering a conducive environment for intellectual property protection and regional economic integration.

GENERAL CONCLUSION

The comparative analysis of two landmark Ugandan cases A-Class Funeral Management ltd v A-Class Funeral Services (U) ltd and URSB Civil Suit No. 355 of 2020, and Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016). provides valuable insights into the nuanced landscape of passing off and distinctiveness in trademarks within Uganda's legal framework.

In these cases, the courts have extended considerable efforts to underscore the importance of businesses registering with distinctive names. The approach leans on the idea of leaving certain decisions to consumers, empowering them to discern potential confusion. The A-Class Funeral Management case, in particular, exemplifies this by recognizing that the public plays a crucial role in determining confusion, emphasizing a balance between legal standards and consumer perceptions.

Contrastingly, the Nairobi Java House case introduces a global perspective, acknowledging that certain words, like "Java," can carry varied meanings in different countries. The court's recognition that no one holds a monopoly over such common terms aligns with a broader understanding of cultural and linguistic diversity. Notably, the case harmonizes with the Paris Convention, placing precedence on the first mark registered in time, and finds resonance in Sections 44 and 45 of the Ugandan Trademarks Act 2010. These sections, mirroring the principles of the Paris Convention, actively support the free movement of goods and services within the East African Community.

As these legal battles unfold, the cases illuminate both the strengths and limitations inherent in Uganda's intellectual property protection framework. The emphasis on distinctiveness, consumer awareness, and alignment with international conventions suggests a dynamic legal landscape that strives to balance the interests of businesses, consumers, and global trade practices. In navigating this landscape, stakeholders and legal practitioners should be mindful of these complexities and actively engage in shaping an evolving and effective trademark system in Uganda.

By

Atuheire Gloria (A PGDLP Candidate) for any inquiries you can reach out gloriaatuheire31@gmail.com and  Contributions from Waboga David (A PGDLP Candidate) find this paper on LinkedIn below https://www.linkedin.com/feed/update/urn:li:activity:7153194284169539584

NOTE TO READERS

Thank you for reading this article. I hope you found it useful and informative. Please note that the above analysis is intended for informational purposes only and does not constitute legal advice. The information provided is based on publicly available sources and general principles of law as of the date of the analysis. Laws and regulations may vary, and legal interpretations can change over time. Readers are advised to consult with qualified legal professionals for advice tailored to their specific circumstances. The author and the platform shall not be held responsible for any inaccuracies, errors, or omissions in the content or for any actions taken in reliance on the information provided.

[1] A-Plus Funeral Management Limited v A-Class Funeral Services (U) Limited and Another (Civil Suit 355 of 2020) [2023] UGHCCD 186 (30 June 2023) retrieved from https://ulii.org/akn/ug/judgment/ughccd/2023/186/eng@2023-06-30 Accessed at 1/17/2024 12:59 AM

[2] Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9 February 2016) retrieved from https://ulii.org/akn/ug/judgment/ugcommc/2016/12/eng@2016-02-09 Accessed at 1/17/2024 1:02 AM