A COMPARATIVE ANALYSIS OF THE LIKELIHOOD

OF CONFUSION TEST IN INTELLECTUAL PROPERTY

LAW IN UGANDA.
“The touchstone of trademark infringement under the Lanham Trade-
Mark Act is the "likelihood of confusion," or whether a substantial
number of ordinarily prudent purchasers are likely to be misled or
confused as to the source of different products. Mushroom Makers, Inc.,
v. RG. Barry Corp., D.C.N.Y., 441 F.Supp. 1220, 1225. ( As per Black’s
Law Dictionary 6th Edition (By the Publisher’s Editorial Staff)
1990.Pg. 925

Page | 1
Contents
1. Abstract.
2. Introduction
3. Meaning of Likelihood of Confusion
4. How Have Courts in Uganda relayed and applied the principle
of likelihood of confusion test for trademark infringement and
passing off cases?
5. How do the Ugandan courts deal with the challenges and
complexities that arise in the likelihood of confusion cases, such
as the use of foreign languages, the use of the internet and social
media, the use of composite or stylized marks, and the use of
generic or descriptive terms?
6. How do the Ugandan courts align their likelihood of confusion
decisions with the international and regional conventions and
agreements on trademark protection, such as the Paris
Convention, the TRIPS Agreement, ?
7. Conclusion.

Page | 2
ABSTRACT.
The likelihood of confusion test is a key concept in intellectual property
law that determines whether the use of a mark or a work by one party is
likely to confuse with another party’s mark or work. The test is used to
assess whether there is a case of trademark infringement or passing off,
which are both forms of unfair competition that harm the goodwill and
reputation of the trademark owners and the consumers. The test is also
used to evaluate whether a mark is eligible for registration or protection,
as it must be distinctive and not confusing with any existing marks.
The test is not a uniform or universal one but varies depending on the
jurisdiction and the context. Different countries and regions have
different laws and standards for applying the test, and different courts and
authorities have different approaches and methods for analyzing the test.
Therefore, a comparative analysis of the test can reveal the similarities
and differences, as well as the strengths and weaknesses, of the various
legal systems and practices.
One of the countries that has a unique and evolving legal framework for
intellectual property protection is Uganda, which is a member of the East
African Community and the African Regional Intellectual Property
Organization (ARIPO)1. Uganda has enacted the Trademarks Act 2010,
which provides for the registration and enforcement of trademarks, as
well as the remedies for infringement and passing off. The Act also
incorporates international and regional conventions and agreements on
trademark protection, such as the Paris Convention, the TRIPS
Agreement,
However, the application and interpretation of the Act and the likelihood
of confusion tests are not always clear or consistent, and there are many
1
Uganda is a signatory of the Banjul Protocol which means it can be designated for the purposes of registering trade
marks using the ARIPO trade mark system. Member states conduct substantive examination of applications after
which ARIPO registers the trade marks on behalf of its members and subsequently administers the registrations in
terms of the Banjul Protocol. https://intellectual-property-helpdesk.ec.europa.eu/system/files/2021-
11/09_Uganda_final_2.pdf Accessed at 1/19/2024 2:43:32 PM

Page | 3
challenges and gaps in the legal framework and practice of trademark
protection in Uganda. Some of the issues and questions that arise include:
1. How does the Trademarks Act 2010 define and apply the likelihood
of confusion test for trademark infringement and passing off cases?
2. How do the Ugandan courts compare and contrast the marks, the
goods or services, and the other relevant factors in the likelihood of
confusion analysis?
3. How do the Ugandan courts deal with the challenges and
complexities that arise in the likelihood of confusion cases, such as
the use of foreign languages, the use of the internet and social media
(online trading and marketing by individual companies), the use of
composite or stylized marks, and the use of generic or descriptive
terms?
4. How do the Ugandan courts assess the impact of the likelihood of
confusion on the consumers and the public, and what are the
remedies and sanctions that are available for the trademark owners
and the infringers?
5. How do the Ugandan courts align their likelihood of confusion
decisions with the international and regional conventions and
agreements on trademark protection, such as the Paris Convention,
the TRIPS Agreement,
6. How do the Ugandan courts adapt and update their likelihood of
confusion tests to reflect the changing market conditions and
consumer behavior, and what are the implications and challenges
for the future development of trademark law and practice in
Uganda?
These are some of the questions that a comparative analysis of the
likelihood of confusion test in intellectual property law in Uganda can set
to answer, by examining and evaluating the legal principles and
arguments, the case law and precedents, and the empirical and theoretical
evidence that are relevant to the topic. Such an analysis can provide a

Page | 4
deeper understanding of the evolving legal landscape surrounding
trademark protection and unfair competition in Uganda, and can also
offer some recommendations and suggestions for improving the
likelihood of confusion test and the enforcement and registration of
trademarks in Uganda.
INTRODUCTION.
Intellectual property law protects the rights of creators and owners of
distinctive signs, such as trademarks, that identify the source and quality
of goods or services. However, these rights are not absolute and may be
challenged by others who use similar or identical signs that create a
likelihood of confusion among consumers.
The likelihood of confusion test is a key element of trademark
infringement, as it determines whether the use of one trademark causes
consumers to mistake it for another previously established trademark2.
Different jurisdictions have developed different standards and factors to
assess the likelihood of confusion, which may lead to inconsistent and
unpredictable outcomes.
This article aims to compare and contrast the likelihood of confusion test
in three different legal systems: Uganda, the United States, and the
European Union. It will examine the historical development, the legal
framework, and the practical application of the test in each system, and
highlight the similarities and differences among them. It will also analyze
the strengths and weaknesses of each approach and suggest some
possible improvements and harmonization.
The article will argue that the likelihood of confusion test is a complex
and context-dependent inquiry that requires a balance between the
interests of trademark owners, competitors, and consumers, and that there
is no one-size-fits-all solution for all cases.

2
Laham Act, 15 USA

Page | 5
The National IP Laws in Uganda are3
1. The Industrial Property Act of 2014 and Industrial Property
Regulations 2017.
2. The Trademarks Act 2010 and Trademarks Regulations 2012
3. The Copyright and Neighboring Rights Act, 2016 and Copyright
and Neighboring Rights Regulations, 2012
4. The Geographical Indications Act 2013
5. The Trade Secrets Protection Act, 2009
Uganda is also party to;
1. Banjul protocol on marks
2. Harare Protocol on Patents, Utility models and Industrial designs.
3. TRIPS Agreement Currently under review is the National
Intellectual property Policy.
Uganda however is not party to the Madrid protocol
MEANING OF LIKELIHOOD OF CONFUSION.
In Uganda, the Trademarks Act, 2010 does not define the term likelihood
of confusion however a closer definition of this term is found in the
Black’s Law Dictionary 6th Edn which defines likelihood of confusion as
“The touchstone of trademark infringement under the Lanham Trade-
Mark Act is the "likelihood of confusion," or whether a substantial
number of ordinarily prudent purchasers are likely to be misled or
confused as to the source of different products.4”
Comparatively in the United States of America, the test for likelihood
of confusion is the Lapp test5 , which is the standard, used to determine

3
URSB COUNTRY REPORT UGANDA Retrieved from
https://www.wipo.int/edocs/mdocs/africa/en/wipo_ipas_tm_gbe_17/wipo_ipas_tm_gbe_17_t_8_q.pdf
Accessed at 1/27/2024 2:10:54 AM
4
Black’s Law Dictionary 6th Edition (By the Publisher’s Editorial Staff) 1990.Pg. 925
5
Cornell Law School retrieved from
https://www.law.cornell.edu/wex/lapp_test#:~:text=A%20likelihood%20of%20confusion%20exists%20when%20a

Page | 6
whether a likelihood of confusion exists between two trademarks. Under
the Lanham Act6, liability for trademark infringement is based on a
finding that the use of one trademark causes a likelihood of confusion
with another previously established trademark. A likelihood of confusion
exists when an allegedly infringing trademark is likely to cause an
appreciable number of reasonably prudent purchasers to be confused as
to the source or origin of the products or services it is used to identify.
The Lapp test is a multi-factored test used to establish the existence of a
likelihood of confusion. The Lapp factors include:
1. The degree of similarity between the owner's mark and the alleged
infringing mark;
2. The strength of the owner's mark;
3. The price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase;
4. The length of time the defendant has used the mark without
evidence of actual confusion arising;
5. The intent of the defendant in adopting the mark;
6. The evidence of actual confusion;
7. Whether the goods, though not competing, are marketed through
the same channels of trade and advertised through the same media;
8. The extent to which the targets of the parties' sales efforts are the
same;
9. The relationship of the goods in the minds of consumers because of
the similarity of function;

n%20allegedly%20infringing%20trademark,it%20is%20used%20to%20identify. Accessed at 1/26/2024 1:54:56

PM
6
The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946. The Act provides for a national
system of trademark registration and protects the owner of a federally registered mark against the use of similar
marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.
(Sourced from : https://www.law.cornell.edu/wex/lanham_act accessed at 1/26/2024 2:05:04 PM)

Page | 7
 10. Other facts suggesting that the consuming public might
expect the prior owner to manufacture a product in the defendant's
market, or that he is likely to expand into that market.
Esteemed scholar Steven John Olsen in the article Mixed Signals in
Trademark's "Likelihood of Confusion Law": Does Quality
Matter?7 Where he observes that, In the United States, the individual
states were the first to develop trademark protection rights and
continue to do so today8 The First Restatement of Torts explains the
early common law theories of trademark protection9. However, the
federal government’s adoption of the Lanham Act in 1946, while not
superseding the state regulations, was a pivotal step in trademark
protection history10. The Lanham Act, as amended, allows a user to
register the mark with the Patent and Trademark Office (“PTO”) at a
small fee for federal trademark protection11. An individual or entity
receiving federal trademark registration has an easier time proving the
existence of a qualified trademark, but registration is not necessary to

7
Mixed Signals in Trademark's "Likelihood of Confusion Law": Does Quality Matter?, 44 Val. U. L. Rev. 659
(2010). Available at: https://scholar.valpo.edu/vulr/vol44/iss2/8 Accessed at 1/26/2024 2:39:10 PM.
8
PAUL GOLDSTEIN & R. ANTHONY REESE, COPYRIGHT, PATENT, TRADEMARK AND RELATED
STATE DOCTRINES 167 (6th ed. 2008) (“The fundamental legal principles that govern trademarks and prohibit
passing off evolved at common law, primarily as a matter of state law.”).
9
RESTATEMENT (FIRST) OF TORTS § 731 (1938). Section 731 states: In determining whether one’s interest in
a trade-mark or trade name is protected, under the rules stated in §§ 717 and 730, with reference to the goods, services
or business in connection with which the actor uses his designation, the following factors are important: (a) the
likelihood that the actor’s goods, services or business will be mistaken for those of the other; (b) the likelihood that
the other may expand his business so as to compete with the actor; (c) the extent to which the goods or services of
the actor and those of the other have common purchasers or users; (d) the extent to which the goods or services of
the actor and those of the other are marketed through the same channels; (e) the relation between the functions of the
goods or services of the actor and those of the other; (f) the degree of distinctiveness of the trademark or trade name;
(g) the degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those
of the other; (h) the length of time during which the actor has used the designation; (i) the intent of the actor in
adopting and using the designation.
10
Lanham Act, Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified at 15 U.S.C. §§ 1051– 1072). See Irene Calboli,
Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone, 57 FLA. L. REV. 771, 803 (2005)
(acknowledging the Lanham Act for its role in emphasizing the importance of protecting the goodwill created by
trademarks)
11
15 U.S.C. § 1051 (2006) (requiring an applicant to include in the application specifications of the following:
applicant’s domicile and citizenship, the date the mark was first used in commerce, the goods in connection to the
mark, and a drawing of the mark). See also Petition for Writ of Certiorari Brief at 4, Gibson Guitar Corp. v. Paul
Reed Smith Guitars, L.P., 547 U.S. 1179 (2006) (No. 05-1263), 2006 WL 858515 [hereinafter Gibson Guitar Petition
for Writ of Certiorari] (noting that a user’s mark shall be incontestable after five years of consecutive use subsequent
to filing).

Page | 8
 enjoy the Lanham Act’s protection12. Protection under the Act requires
registration or actual use of a qualified mark in commerce13. Although
the elements necessary to gain and maintain trademark protection are
important aspects of trademark law, this Note focuses on the elements
used by the judiciary in trademark infringement suits; specifically, the
quality of an alleged infringer’s goods14.
MEANING OF LIKELIHOOD OF CONFUSION IN THE
UGANDAN CONTEXT.
The trademarks Act, 2010 under section 36 explains the rights and
infringement of trademarks registered in Part A of the register. Part A
of the register contains trademarks that are distinctive, meaning that
they can distinguish the goods or services of one person from those of
another. The section states that:
1. A person who registers a trademark in Part A has the exclusive right
to use it for the goods that it covers, unless the registration is invalid
or subject to some exceptions.
2. A person who uses a mark that is identical or similar to a registered
trademark in Part A, without being the owner or a registered user,
infringes the trademark if the use causes confusion or deception

12
Anne Hiaring, Basic Principles of Trademark Law, in PRACTICING LAW INST., UNDERSTANDING
TRADEMARK LAW: 2007, at 27, 30 (2007). “In the United States, the establishment of ownership rights in
trademarks and service marks requires either the: 1) filing of intent to use applications to register with the United
States Patent and Trademark Office, or 2) actual use of the mark in commerce.” Id. See 15 U.S.C. § 1125 (also known
as Lanham Act § 43(a)) (outlining the steps necessary for proving a trademark infringement when the trademark has
not yet been registered with the United States Patent and Trademark Office).
Section 43(a) states in part: (1) Any person who, on or in connection with any goods or services, or any container for
goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial
activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by
such act
13
See supra note 20 and accompanying text (outlining the methods to establish ownership rights in a trademark and
receive Lanham Act protection for the trademark.
14
See infra Part II.B (analyzing the legal analysis examined in the administration of trademark infringement suits)

Page | 9
 among consumers, or implies a connection with the owner or the
goods that the trademark covers.
3. The right to use a trademark in Part A is limited by the conditions
or restrictions that are entered on the register, and does not apply to
the use of the mark in situations that are outside the scope of the
registration.
It is worth noting that Section 2 (4) of the Trademarks 201015 is to
the effect the register shall be divided into two parts called Part A and
Part B respectively. Furthermore, these goods are classified under
Regulation 12 of the Trademarks Regulations 201216, explains
how goods and services are classified for the purpose of trademark
registration in Uganda. The section states that:
1. Goods and services are classified according to the Third
Schedule of the Regulations, which contains 45 classes of goods
and 11 classes of services.
2. The classification is based on the International Classification of
Goods and Services, also known as the Nice Classification,
which is a system of classifying goods and services for the
registration of marks under the Nice Agreement.
3. The Regulations refer to the 9th edition of the Nice
Classification, published by the World Intellectual Property
Organization (WIPO) in 1992.If the Nice Classification is
updated by WIPO in the future, the Minister, on the advice of
the Registrar, will publish the changes in the Gazette and amend
the Third Schedule accordingly.
4. If there is any doubt about which class a certain good or service
belongs to, the Registrar will decide the matter.

15
The Trademarks 2010
16
Trademarks Regulations 2012

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 HOW HAVE COURTS IN UGANDA RELAYED AND
APPLIED THE PRINCIPLE OF LIKELIHOOD OF
CONFUSION TEST FOR TRADEMARK
INFRINGEMENT AND PASSING OFF CASES?
The principle of likelihood of confusion test is a key element of
trademark infringement and passing off cases in Uganda. It means
that the use of one trademark causes consumers to mistake it for
another previously established trademark.
The courts in Uganda have applied this principle by looking at the
marks and comparing them to see if they are identical or similar,
and if they are likely to deceive or cause confusion in the minds of
an average consumer.
The courts have also considered other factors, such as the
similarity of the goods or services, the distinctiveness of the marks,
the reputation of the marks, the intention of the infringers, and the
actual confusion among consumers. Some of the cases where the
courts have applied this principle are
1.Nice House of Plastics v Hamidu Lubega17
This case was about a trademark infringement and passing off claim
by Nice House of Plastics Ltd, the plaintiff, against Hamidu Lubega,
the defendant. The plaintiff alleged that the defendant imported and
intended to sell tooth brushes bearing its registered trademarks
‘NICE’ and ‘NICE TOOTH BRUSH’.
Court observed
As to whether the defendant’s importation of the 25 cartons, the
subject matter of this suit, amounts to an infringement of the
plaintiff’s trademarks,
A trademark infringement plaintiff must show a valid, protectable
trademark in which he has rights prior to those of the defendant.
17
Nice House of Plastics v Hamidu Lubega (HCT-00-CC-CS 695 of 2006) [2007] UGCommC 58 (31 May 2007)

Page | 11
The plaintiff herein has through the evidence of PW1 and PW2
shown that the trademarks which are the subject of this suit have
not been the subject of any assignment, registered user or third
party rights.
The test of infringement is likelihood of confusion.
Likelihood of confusion is the probability that a reasonable
consumer in the relevant market will be confused or deceived, and
will believe that the impugned goods or services come from, or the
sponsored or endorsed by the protected user or that the two users
are affiliated. Infringement is thus analogous to the tort of fraud.
Court further held that“….In my view, a trade mark owner who
successfully shows likelihood of confusion is entitled to both
injunctive relief and money damages from the infringer. In view of
my findings above, the plaintiff is entitled to the above three reliefs.
I grant them. The infringing tooth brushes and product get-up in
which the defendant’s toothbrushes are packed shall be delivered
up to the plaintiff for destruction under the supervision of officials
of Uganda Revenue Authority (URA) and Uganda National
Bureau of Standards (UNBS)…”

Whereas in regards to passing off

Court held as follows;
“…As to whether or not the plaintiff has made out a case of
passing off, Court is of the view that a cause of action for passing
off is a form of intellectual property enforcement against the
unauthorized use of a mark which is considered to be similar to
another party’s registered or unregistered trade marks,
particularly where the action for trademark infringement based
on a registered trade mark is unlikely to be successful (due to the
differences between the registered trade mark and the
unregistered mark). It is a common law tort which can be used
to enforce unregistered trade marks.

Page | 12
 The instant case is for enforcement of registered trade marks.
Furthermore, going by the authorities, five characteristics which
must be present in order to create a valid cause of action for passing
off are:
(1) a misrepresentation;
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of
goods or services supplied by him;
(4) which is calculated to injure the business or good will of the
trader (in the sense that it is a reasonably foreseeable
consequence), and
(5) which causes actual damage to a business or good will of the
trader by whom the action is brought or will probably do so.
See: (1) Spalding (AG) & Bros –Vs- AW Gamage Ltd & Anor
(1915)32 RPC 273, HL (2) Reckitt & Coleman Ltd –Vs- Borden
Inc. [1990] 1 WLR 491.
In conclusion, court held that “…while the intention of the
defendant may indeed have been to pass off his goods as those of
the plaintiff, the incomplete nature of the attempt leads the
Court to the view that a case of passing off has not been
sufficiently made out….”

THE SECOND DECISION IS VISION IMPEX

LIMITED V SANSA & ANOR18
The facts briefly are, The plaintiff, a Limited Liability Company
and the registered owner of the ABC "Feathers" Sanitary Pads
trademark, filed a lawsuit against the defendants for infringing and
passing off their trademark.

18
Vision Impex Limited v Sansa & Anor (Civil Suit No. 303 of 2013) [2017] UGCommC 59 (6 June 2017)

Page | 13
The plaintiff, being the exclusive distributor of the sanitary pads,
asserted that the defendants imported a consignment of similar
pads, intending to mislead the public and cause potential damage.
The defendants' consignment was seized by authorities on
suspicion of counterfeiting and unauthorized use of standards. The
plaintiff sought various remedies, including a permanent
injunction, impounding and destruction of the infringing goods,
damages, an account of profits, and costs. Interlocutory judgment
was entered against the defendants for non-appearance, and formal
proof proceeded with a witness confirming the similarity between
the plaintiff's and defendants' products.
The plaintiff argued that the public could not differentiate between
the products, leading to a decline in sales and damages to the brand.
The plaintiff requested judgment in their favor and all sought
remedies. The key issues for determination included the plaintiff's
right to exclusive use of the trademark, whether the defendants'
actions constituted infringement, and the available remedies
for both parties.

Court held that,

Under Section 36(2) of the Trade Marks Act, infringement
occurs when a person, not the owner or a registered user, uses
a mark identical or closely resembling a registered trademark,
likely to cause confusion in the course of trade. Decided cases,
such as Angelo Fabrics (Bolton) Ltd vs. Africa Queen Ltd and
Standard Signs (U) Ltd vs. Standard Signs Ltd, establish that
the test for infringement is the likelihood of confusion among
reasonable customers. In the current case, the marks on the
defendant's goods closely resemble those of the plaintiff,
causing potential confusion in terms of color, design, sound,
and belonging to the same class of goods (sanitary pads).
Despite minor differences, the goods are visually and

Page | 14
conceptually similar, leading to the likelihood of confusion. The
defendants, who did not defend the suit, are deemed guilty of
trademark infringement. The consignees named in the
importation documents are considered owners of the goods
under established legal principles.

Court thus held that

The goods imported by the defendants were deceptively similar to
the plaintiff's, posing a likelihood of confusion among reasonable
users of sanitary pads. The defendants, who did not defend the suit,
were deemed guilty of trademark infringement. Sansa Ambrose and
Goldman Logistics Import and Export, named as consignees in
importation documents, are considered owners of the 2049 cartons
of "Featlhers" sanitary pads under legal principles.
The plaintiff argued that the use of the similar mark by the
defendants, without consent, could cause confusion, mistake, or
deception in commerce. The evidence presented by the plaintiff
indicated a risk that the public might associate the defendants'
goods with the plaintiff or an economically linked undertaking.
The court held that the likelihood of confusion was high, as the
goods are so similar that a customer might assume the products are
associated with each other.
In light of these factors, the court concluded that the importation
and selling of "Featlhers" sanitary pads by the defendants
constitutes an infringement of the plaintiff's trademark "Feathers."

“It is an infringement for any person, without the consent of the

registered owner of the trade mark, to use in commerce any
reproduction, counterfeit, copy or colorable limitation of a
registered trade mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services on or in

Page | 15
 connection with, which such use is likely to cause confusion, or
to cause mistake, or to deceive…”

The Plaintiff established in its evidence that there was a risk that
the public might believe that the Defendants goods came from the
Plaintiff or an economically linked undertaking. This is because “a
trade mark is a badge of origin or source. The function of a trade
mark is to distinguish goods having the business source from
goods having a different business source. It must be “distinctive”
that is to say, it must be recognizable by a buyer of goods to which
it has been affixed as indicating that they are of the same origin
as other goods which bear the mark and whose quality has
engendered good will”. – Refer to Scandecar Developments AB
vs. Scandecar Marketing AB [2001] UK HL 2L.

THE 3RD CASE ANGLO FABRICS (BOLTON) LTD &

ANOR Versus AFRICAN QUEEN LTD & ANOR19
The facts briefly are, the 1st plaintiff, a UK-based limited liability
company, and the 2nd plaintiff Ahmed Zziwa, a sole registered user
in Uganda, are pursuing a claim against the 1st defendant, a
Ugandan company, and the 2nd defendant, its Managing Director.
The claim alleged infringement of the 1st plaintiff's trademark and
passing off of the defendants' goods as those of the plaintiff,
specifically medicated soap bearing the registered trademark
'Mekako.' The parties agreed during a scheduling conference on key
points, including the trademark registration and renewal, the sole
registered user in Uganda, importation of a soap product known as
Mekako by the defendants, and the presence of mercury in the
plaintiffs' Mekako soap. The identified issues for determination
included the validity of the 1st plaintiff's claim, compliance with

19
ANGLO FABRICS (BOLTON) LTD & ANOR Versus AFRICAN QUEEN LTD & ANOR HCT-00-CC-CS-
0632-2006

Page | 16
UNBS standards, the alleged ban of the plaintiffs' product in
Uganda, trademark infringement, the international registration of
the word "Mekako," the soap's status under an international
trademark, and the entitlement of the plaintiffs to the claimed reliefs
against the defendants.

Court held as follows

“….In cases where trademark infringement is alleged, as herein,
the infringement occurs when a suspected infringer uses a mark
for goods or services identical or closely related to those of the
plaintiff. The test of infringement is likelihood of confusion. “

“…Likelihood of confusion is the probability that a reasonable

consumer in the relevant market will be confused or deceived, and
will believe the infringer’s goods or services come from, or are
sponsored or endorsed by, the complainant or that the two are
affiliated...”

The court further held that…

“…I said in Nanoomal Issardas Motiwalla (U) Ltd –Vs- Sophie
Nantongo & Others HCT00-CC-CS-0430-2006 (unreported) and
I reiterate that position herein, that infringement is analogous to
the tort of fraud. The duty of the Judge in a case such as this is
to decide, upon seeing the goods, whether the plaintiffs goods
nearly resemble the ones complained of as to be likely to deceive
or cause confusion in the minds of the public.

Having found that the products in the instant case are identical
in every possible way; and in view of the admitted fact that the
defendants have imported into the country a soap product known
as Mekako; and in view of the unchallenged evidence that the
importation was done without knowledge and/or authority of the

Page | 17
 plaintiffs, I have found no difficulty in determining the fourth
issue in the affirmative. I do so”.

In regards to Passing off

The court held as follows;
“This is a case grounded in infringement of a trademark and
passing off. Going by authorities, 5 characteristics which must
be present in order to create a valid cause of action for passing
off are:
(i) a misrepresentation;
(ii) made by a trader in the course of trade;
(iii) to prospective customers of his or ultimate consumers of
goods or services supplied by him;
(iv) which is calculated to injure the business or good will of the
trader (in the sense that it is a reasonably foreseeable
consequence);
(v) which causes actual damage to a business or goodwill of the
trader by whom the action is brought or will probably do so.
See: Reckitt & Coleman Ltd –Vs- Borden Inc. [1990] 1
WLR 491.
The plaintiffs have demonstrated a misrepresentation by the
defendants, to the public, in the sense that their (the defendants)
product has also been on the market selling along side that of
the 2nd plaintiff, PW1

THE 4TH CASE IS STANDARD SIGNS UGANDA LTD V

FRED LEO OGWANG T/A SHANDARD & ANOR20

20
Standard Signs Uganda Ltd v Fred Leo Ogwang T/a Shandard & Anor (High Court Civil Suit No. 240 of 2006)
[2012] UGCommC 9 (23 February 2012)

Page | 18
The facts briefly are, The plaintiff, a limited liability company, brought a
lawsuit against the defendants for trademark infringement and passing
off of its business name. The defendants denied the allegations, stating
that the 1st defendant registered and traded under the name "Shandard
Signs" and later incorporated "Shandard Signs (Uganda) Limited."
The case had a history of delays and changes in legal representation.
The origin of the dispute dates back to 1997 when the plaintiff operated
as "Standard Signs Uganda" before formally registering the business
name and incorporating a limited liability company in 2003. The plaintiff
also registered a trademark in 2005.
The 1st defendant, operating as "Shandard Signs" since 2002,
incorporated a company in 2003. The parties agreed on issues, including
infringement of the plaintiff's business name and trademark, passing off,
and sought remedies. The court, considering the evidence and lack of
defense, was tasked with determining the validity of the plaintiff's claims
and deciding on available remedies.
Court held that,
Since first issue in the case revolves around the similarity between the
plaintiff's business name "Standard Signs" and the 2nd defendant's name
"Shandard Signs." The primary difference lies in the second letter of
the first word, with the plaintiff's using "t" and the 2nd defendant's using
"h." Despite this single difference, the rest of the words are identical,
creating a close resemblance that could lead to confusion. The
pronunciation and the expert's observation highlight the potential for
confusion.
Drawing on the precedent of Parke Davis & Company Limited v Opa
Pharmacy Limited [1961] EA 556, where the use of identical first two
syllables and resemblances in containers indicated a real probability of
confusion, the court finds merit in the plaintiff's claim. The expert's

Page | 19
observation about the potential confusion in audio adds weight to this
conclusion.
Addressing the issue of name registration, the plaintiff's Managing
Director provided a compelling explanation for choosing "Standard,"
emphasizing the quest for high-quality products. In contrast, the 1st
defendant's explanation for "Shand" lacked convincing details, and the
lack of proof for his brother Leonard's name raised doubts.
Reviewing the evidence of the business name registration, the plaintiff's
Managing Director initiated business operations in 1997 and registered
the name in 2003, supported by relevant certificates. The 1st defendant's
timeline and name registration, beginning in 2002, raised concerns about
the irregularity of the registration process.
Considering these factors, the court concludes that the plaintiff's
registration of "Standard Signs" predates the 1st defendant's registration
of "Shandard Signs," and the latter's registration was irregular. The
continued use of "Shandard Signs" and the subsequent incorporation as
"Shandard Signs (Uganda) Limited" infringe on the plaintiff's name.
Therefore, the court affirms the first issue in favor of the plaintiff.
In regards to Passing off
The court reiterated the decision of Reckit & Colman Products v Borden
[1990] All E.R. 873 which stated the three issues to be determined in
cases of passing off namely that:
1. The party alleging passing off must prove whether the defendant’s
business had acquired good will in the area;
2. Whether the defendant impliedly or expressly misrepresented his
goods as those of the plaintiff; and
3. Whether any damage arose from this misrepresentation.

Page | 20
5TH CASE IS NAIROBI JAVA HOUSE LTD V MANDELA
AUTO SPARES LTD21
The facts briefly are, this was an appeal by Nairobi Java House Ltd (the
appellant), a Kenyan company operating under the trademark JAVA
HOUSE. The appeal was challenging the decision of the Registrar of
Trademarks in a trademark opposition brought by Mandela Auto Spares
Parts Ltd against the registration of 'JAVA HOUSE AND JAVA SUN'
and 'NAIROBI JAVA HOUSE' by Nairobi Java House Ltd. The High
Court of Uganda had set aside the Registrar's decision.
The appellant argued that the Registrar made substantial errors in
evaluating the trademark case, including inadequate comparison of
trademarks, incorrect categorization as word marks, and failure to
recognize the descriptiveness of the term "Java." They contended that
the Registrar considered irrelevant matters and inadmissible evidence,
leading to an erroneous conclusion regarding the likelihood of confusion.
In response, the respondent opposed the appeal, emphasizing that the
Assistant Registrar had already upheld their objection to the appellant's
trademark registration. The appellant had appealed on nine grounds,
attempting to amend them later, which was disallowed. The appellant
subsequently abandoned the initial grounds, raising concerns about the
introduction of new grounds. The respondent's counsel argued that the
newly submitted grounds deviate from the specified grounds in the notice
of motion, focusing on matters like the meaning of "Java," the source of
service origin, the reasonable consumer, judicious exercise of discretion,
concurrent usage, and trade competition.
Court’s determination on the matter of Likelihood of Confusion
The court held

21
Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015) [2016] UGCommC 12 (9
February 2016)

Page | 21
In Specsavers International Healthcare Ltd versus Asda Stores Ltd
[2012] EWCA Civ at paragraph 51 and 52, the Court of Appeal of
England and Wales observed that the general approach to be adopted
in assessing the requirement of likelihood of confusion is that the
likelihood of confusion must be appreciated globally, taking account of
all relevant factors and the matter must be judged through the eyes of
the average consumer of the goods or services in question who is
deemed to be reasonably well-informed and presumably circumspect
and observant. In the premises the Appellant’s Counsel contends that
the average consumer is not about nationality but a legal construct. It
follows that the average consumer in Uganda being not as well
informed is irrelevant to the formulation of who the average consumer
is. Where the average consumer has a low-level of literacy, greater
emphasis should be put on the visual and aural differentiation between
the sings in question rather than the word "Java".
The court further held that,
The Registrar of Trademarks committed a distinct and material
error of evaluation and principle in finding that a likelihood of
confusion would exist as to the source of origin of the services
provided by the Appellant and Respondent.
The Registrar of Trademarks committed a distinct and material
error of evaluation and principle in formulating a narrow
construction of the reasonable consumer test, and resultantly
arrived at the erroneous conclusion that a likelihood of confusion
exists
In a detailed judgement on Page 44, the court observed that the priority
of trademarks registered in different member states of the East African
Community, specifically focusing on marks registered in Kenya and
sought to be registered in Uganda. The international legal framework,
including the Paris Convention for the Protection of Industrial
Property, is explored.
Page | 22
Under the Paris Convention, trademarks registered in one country are
considered independent of registrations in other countries, and protection
is provided for marks registered in a member state within the union. The
length of time a mark has been in use is deemed relevant in this context.
The appellant, seeking registration in Uganda, presented certificates
proving prior registration in Kenya.
The Ugandan Trademarks Act of 2010 incorporates principles from the
Paris Convention, with sections 44 and 45 addressing the refusal of
trademarks based on resemblances to foreign registered marks. The Act
emphasizes that the mark registered first in time takes priority, and the
court has jurisdiction to remove a trademark registered later that
resembles a foreign-registered mark.
Considering the East African Community's principles of
complementarity and free movement of goods and services, the court
noted that the decision of the Registrar, which restricts the registration of
a trademark registered earlier in Kenya, hinders the free movement of
services within the East African Community. The court asserted that
Sections 44 and 45 of the Trademarks Act 2010 support freedom of
movement of goods and services within the East African Community
within certain limitations.
Justice Madrama critically examined the Registrar's ruling, and it was
found that there is no visual resemblance between the Appellant's
trademark ("Nairobi Java House Coffee & Tea") and the Respondent's
mark ("Cafe Javas"). The Registrar acknowledged this lack of visual
similarity. While there were some conceptual similarities due to the
dominant element "Java," the Registrar erred in not recognizing that
"Java" is a descriptive term and should have been disclaimed by the
appellant.
The Registrar's conclusion on the likelihood of confusion was deemed
faulty. The court observed that no survey was conducted, and the
opinions of two individuals were considered insufficient to establish
Page | 23
confusion among the public. The Registrar relied on the evidence of
Mohammad Mohideen, but it was noted that there was no representation
of the average consumer or evidence regarding the Respondent's
clientele.
Additionally, court emphasized that the trademarks are visually distinct
and that the appellant has been using the mark in Kenya since 1999, and
the lack of evidence supporting confusion led to the conclusion that the
two marks are dissimilar.
As a result, the grounds raised in the Notice of Motion (grounds 1, 5, 6,
7, and 8) were allowed, and the Appellant's appeal succeeded with costs.
The Registrar's decision was set aside, and a consequential order was
issued compelling the registrar to allow the registration of the Appellant's
application, subject to conditions of disclaimer under section 26 of the
Trademarks Act 201022
I quote the decision as follows;
What needs to be considered before considering
likelihood of confusion or similarity of the opponent’s
marks is which mark takes priority? It is a matter of
public interest for the East African Community to
consider what to do with marks registered prior in
another member state and sought to be registered in
yet a different member state of the Community.

22
Sec 26 of the Trade Marks Act 2010 outlines the conditions under which the registrar or the court, when considering
applications for registration of identical or resembling trademarks, may require the owner to make disclaimers. If a
trademark, whether for goods or services, contains common or non-distinctive elements, the registrar or court can
impose conditions, such as requiring the owner to disclaim the exclusive right to use certain parts of the trademark.
The disclaimer, once entered on the register, does not impact the owner's overall rights, except in cases where it
specifically relates to the registration in question.

Page | 24
 The evidence on record proves that the Applicant’s
Trademark is a foreign registered trademark having
been registered in Kenya and the owner thereof who
is the Appellant sought to register its mark in Uganda
as well. The international legal framework is inter
alia that of the Paris Convention for the Protection of
Industrial Property 1883 to which Uganda and Kenya
are parties and secondly the provisions of the
Ugandan Law on the matter if any.

I will start with the Paris Convention for the Protection of Industrial
Property of March 20, 1883, as revised at Brussels on
December 14, 1900, at Washington on June 2, 1911, at The Hague on
November 6, 1925, at London on June 2, 1934, at Lisbon on
October 31, 1958, and at Stockholm on July 14, 1967, and as amended
on September 28, 1979, which deals with registration of foreign marks
under article 6 thereof.

Article 6 on the Conditions of Registration; Independence of Protection

of Same Mark in Different Countries provides as follows:

“(1) The conditions for the filing and registration of trademarks

shall be determined in each country of the Union by its domestic
legislation.

Page | 25
 (2) However, an application for the registration of a mark filed by
a national of a country of the Union in any country of the Union
may not be refused, nor may a registration be invalidated, on the
ground that filing, registration, or renewal, has not been effected in
the country of origin.

(3) A mark duly registered in a country of the Union shall be

regarded as independent of marks registered in the other countries
of the Union, including the country of origin.

The article provides that the conditions for filing

and registration of trademarks are determined by
the domestic trademark legislation.

Secondly, a mark registered in one country of the union is independent

of the registration in other countries under the principle of territoriality.
Secondly article 6 quinquies23 provides for the protection of marks
registered in one country of the Union in the other Countries of the Union
and the question is what protection does the Kenyan registered mark of
the Appellant have in Uganda? Article 6 quinquies24 provides inter alia
in paragraph A (1), (2) and paragraph B that countries of the Union
which as I held above include Kenya and Uganda shall accept
trademarks registered in a country of the Union for filing.

23
This refers to the fifth section of Article 6 in the Paris Convention. In legal texts, "quinquies" is a Latin term
meaning "fifth."
24
ibid

Page | 26
 Secondly a country of the Union may require the
Applicant of a foreign registered trademark to produce a
certificate of registration of the trademark in the country
of origin. Thirdly it is provided that the trademark may
neither be denied registration nor invalidated except
inter alia when they infringe rights acquired by third
parties where protection is claimed. Secondly when they
are devoid of any distinctive character or are contrary to
morality or public order among other grounds.
Furthermore paragraph C in determining whether a
trademark is eligible for protection provides the criteria
for consideration is as follows:

“(1) In determining whether a mark is eligible for protection, all

the factual circumstances must be taken into consideration,
particularly the length of time the mark has been in use.

(2) No trademark shall be refused in the other countries of the

Union for the sole reason that it differs from the mark protected in
the country of origin only in respect of elements that do not alter its
distinctive character and do not affect its identity in the form in
which it has been registered in the said country of origin.”

Among other factors the length of time a mark has been in use is a
relevant fact. The length of time is a relevant factor in this appeal.

Page | 27
 Whereas the Paris Convention for the Protection of
Industrial Property gives discretionary powers to a
member of the union through its trademark
registration office to require production by the
Applicant of a certificate of registration in the foreign
country, in the proceedings before the tribunal the
Group Chief Executive Officer of the Appellant Mr.
Rick Ashley produced two certificates of registration in
support of the Appellant’s counterstatement to the
objection and by statutory declaration.

The attached certificate of the Applicant/Appellant to the statutory

declarations proves that the Appellant was registered in Kenya in respect
of the Trademark “Nairobi Java House Coffee & Tea” on the 4th of
December 2000 in class 30 (Schedule III) Under Number 50133 as of the
8th of May 2000, in respect of Coffee, tea, foodstuffs and bakery products
etc. It is again registered in class 11 under trademark number 63904 for
apparatus for lighting, heating, steam generating, cooking, drying,
ventilating and others on the 5th of February 2009 with the effective date
of registration being 20th August 2008.

The Ugandan Trademarks Act 2010 has

domesticated some of the principles of the Paris
Convention for the Protection of Industrial
Property under sections 44 and 45 thereof. Section
Page | 28
44 (1) gives the registrar power to refuse a
trademark where it resembles or is identical with a
foreign registered trademark registered prior in
time. Section 44 (2) gives the Registrar
discretionary powers to refuse to register a foreign
registered trademark on the ground that the mark
is identical with or nearly resembles a trademark
which is already registered in respect of the same
services, the same description of services; or goods
or a description of goods or services which are
associated with those services or services with that
description in a country or place from which the
services originate. However section 44 (3) provides
that the Registrar shall not refuse the application
for registration in Uganda if the Applicant proves
prior use continuously of the mark before the
registration of the foreign trademark in the country
of origin. The general principle that emerges from
sections 44 and 45 of the Trademarks Act 2010 of
Uganda is that the mark registered first in time
takes priority to a later trademark in case of
resemblances.

Page | 29
Section 45 further gives the court jurisdiction to remove from the register
a trademark which is registered after a foreign registered mark in case
the trademark registered in Uganda is identical with or nearly resembles
a trademark of the plaintiff registered in a foreign country in respect of
the same services etc and registered prior in time.

Last but not least I have considered the fact that

Kenya and Uganda are part of the East African
Community and operate under the principle of
complementarities under articles 7 of the Treaty. The
community law is that Member States which include
Kenya and Uganda shall enact similar laws with
regard to the removal of non tariff and other
technical barriers to trade and measures that restrict
free movement of goods and services. Sections 44 and
45 of the Trademarks Act 2010 support freedom of
movement of goods and services in the East African
Community within the limitations contained in the
sections.

In the Treaty for the Establishment of the East African Community (As
amended on 14th December, 2006 and 20th August, 2007) article 7
provides that there shall be free movement of goods and persons, labour,
services, capital information and technology. It provides in article 7 (1)
(c):
Page | 30
 “ARTICLE 7

Operational Principles of the Community

1. The principles that shall govern the practical achievement of the

objectives of the Community shall include:

(c) the establishment of an export oriented economy for the Partner

States in which there shall be free movement of goods, persons,
labour, services, capital, information and technology;

(g) the principle of complementarity; and…”

The decision of the Registrar stifles free movement of

services within the East African Community by
restriction on the registration of a trademark
registered prior in time in Kenya on the ground of
registration of a trademark albeit registered later in
time to Uganda.
Court further held
The Appellants mark which was registered in Nairobi
in the year 2000 has remained the same. It has the
words “Nairobi Java House Coffee & Tea”. In more
specific description the word NAIROBI is written
inside and on top of a rectangular box. It is
immediately followed by the devise of a sun depicted
as a human face in the centre and below the word
Nairobi. Thirdly this sun is followed below it by the
word JAVA. After the word Java there is a dash sign
below that resembles the sign “-:-“. Thereafter there
is yet below the words “Coffee & Tea”. The Registrar

Page | 31
 also added the colours. The colour of the sun is in
red. The words coffee and tea are also in red in a
yellow background. In the variation the Appellants
trademark does not have the word Nairobi on top but
has the words JAVA HOUSE coffee & Tea.
The Respondents mark on the other hand has the
words “Cafe’ Javas” with the devise of a steaming cup
above the letters “as” in “Javas”. The word “Cafe” is
in black while the word “Javas” is in orange. The
Registrar, and correctly in my view concluded that
there was no visual similarity between the two marks
namely that of the Appellant and that of the
Respondent. His words are: “Visually the marks do
not resemble”.
First of all from my holding that the word Java is an
ordinarily word, that it is a geographical place in
Indonesia, that it refers to coffee and computer
programming language and that this word is
associated with the business of trademarks, like the
word “Cafe’” it can be used as a descriptive term to
refer to such business in class 43 where coffee is
served. On the basis of that holding, the registrar erred
in law not to find that the word Java is a descriptive
term as held above and properly disclaimed by the
appellant.
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

Page | 32
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 the premises grounds 1, 5, 6, 7 and 8 of the Notice
of motion are allowed. The two marks are capable of
concurrent usage and the Appellant’s appeal succeeds
with costs.
The decision of the Registrar dated 21st May 2015 is set
aside.
A consequential order issue compelling the registrar to
allow registration of the Appellants application No.
48062/2013 and Trademark Application No.

Page | 33
 48063/2013 subject to conditions of disclaimer under
section 26 of the Trademarks Act 2010.

THE LAST CASE IS THE RECENT CASE OF A-PLUS

FUNERAL MANAGEMENT LTD V A-CLASS FUNERAL
SERVICES (U) LTD AND URSB25
The facts briefly are, A-Plus Funeral Management Ltd (the plaintiff),
a funeral services company in Uganda, filed a case against A-Class
Funeral Services (U) Ltd (the 1st defendant), a similar company, and
the Uganda Registration Services Bureau (URSB).
The plaintiff sought declaratory orders claiming that the 1st
defendant's name constituted a pass-off of its business name due to
alleged wrongful and negligent registration by the URSB.
The plaintiff, in operation since 2003, argued it had significant
goodwill in its name. The 1st defendant defended its legal registration
and denied any intention to pass off the plaintiff's name.
The URSB, responsible for registration, contended that the registration
followed legal requirements. The case revolves around issues of
infringement, passing off, liability of the 1st defendant, cause of action
against the 2nd defendant (URSB), negligence in registration, and
potential remedies.
COURT HELD IN REGARDS TO LIKELIHOOD OF
CONFUSION AS FOLLOWS
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

25
A-Plus Funeral Management Ltd v A-Class Funeral Services (U) Ltd and URSB Civil Suit No. 355 of 2020

Page | 34
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.

Page | 35
 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
COURT’S DECISION IN REGARDS TO PASSING
OFF.
The court clarified that passing off 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

Page | 36
 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.

Page | 37
The court dismissed the plaintiff's claim, ruling that the 1st defendant's
name did not constitute passing off.
5. HOW DO THE UGANDAN COURTS DEAL WITH THE
CHALLENGES AND COMPLEXITIES THAT ARISE IN
THE LIKELIHOOD OF CONFUSION CASES, SUCH AS
THE USE OF FOREIGN LANGUAGES, THE USE OF THE
INTERNET AND SOCIAL MEDIA, THE USE OF
COMPOSITE OR STYLIZED MARKS, AND THE USE OF
GENERIC OR DESCRIPTIVE TERMS?
As observed in the decisions above, the likelihood of confusion test is a key
element of trademark infringement and passing off cases in Uganda. It
means that the use of one trademark causes consumers to mistake it for
another previously established trademark.
The courts in Uganda deal with the challenges and complexities that arise
in the likelihood of confusion cases by looking at various factors, such as:
1. Similarity of the marks: The courts compare the marks in terms of
appearance, sound, meaning, and overall impression As seen in the
case of Nairobi Java House Ltd v Mandela Auto Spares Ltd 26
court held that on the issue of similarity of marks or likelihood of
confusion,
The court found that there was no survey which had been conducted
and that the opinion of the two deponents was insufficient to reach
the conclusion that the Registrar reached of confusion of members of
the public. The evidence relied upon by Mandela Auto was the
opinion of one customer and a newspaper article written by one Rita.
According to the court, there was not evidence that Rita interviewed
anybody and her comments were her own opinion.
The learned judge stated that:

26
Supra 20

Page | 38
 “…the trademarks of the parties are visually very
different. In case of association of the word Java through
use or association to acquire distinctiveness the appellant
[Nairobi Java] 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”
A word is not an invented word where it sounds phonetically
equivalent to an unregistrable word. The principle is that a word
cannot be registered if it is the phonetic equivalent of an unregistrable
word;
2. Similarity of the goods or services: The courts consider the nature,
quality, purpose, and target market of the goods or services.
The court observed in the same case of Nairobi Java House (Supra)
that Section 9 (1) of the Trademarks Act 2010 makes it essential that
the trademark shall contain one of the essential characteristics.
In relation to the Respondent which is a limited liability company the
name of the company or the signature of the Applicant or and
invented word or words.
The first three considerations do not apply to the Respondent. The
trademark “Cafe’ Javas” does not have the company name of the
Respondent which is Mandela Auto Spares Ltd.
Secondly it does not have the signature of the Applicant.
Thirdly it does not have an invented word or words unless we accept
that the word “Javas” is not “Java”.
I will therefore consider the other parts of section 9 (1) namely (d)
and (e). As far as item (d) is considered the trademark may consist
of a word or words having no direct reference to the character or

Page | 39
 quality of the goods or services, and not being according to its
ordinary signification, a geographical name or a surname.
In other words the words “Café Javas” had to have no direct
reference to the character or quality of goods or services in
respect of which it is registered.
Secondly it should not be a geographical name or surname. The word
Java is a place in Indonesia and is a geographical name referring to
an Island.
Secondly from the Registrars ruling it is also means coffee. The word
Café means coffee.
I have checked the evidence and dictionary meanings relied on.
Among the evidence considered is that “Java Coffee” refers to coffee
beans produced in the Indonesian Island of Java. Several of the Café
Java or Java Café hits on the internet search relied on by the Appellant
and referred to by the Registrar of Trademarks refer to restaurants in
the USA, Australia and UK among others and where among other
things coffee is served. I have also considered the conclusion of the
Registrar.
Similarly, in Wagamama Ltd v. City Centre Restaurants PLC27,
Lindley J held on the functions of Trade marks, that they have
historically been used to protect the trade with which they are
associated. in SA CNLSUCAL NV v HAG GF AG28.
He said: "Like patents, trademarks find their justification in a
harmonious dove-tailing between public and private interests.
Whereas patents reward the creativity of the inventor and thus
stimulate scientific progress, trademarks reward the manufacturer
who consistently produces high-quality goods and they thus
stimulate economic progress. Without trade mark protection there
would be little incentive for manufacturers to develop new products
or to maintain the quality of existing ones.

27
Wagamama Ltd v. City Centre Restaurants PLC, [1995] FSR 713 (Ch. D.)
28
SA CNLSUCAL NV v HAG GF AG [1990] 3 CMLR 571 (HAG II).

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 Lastly in The Eastman Photographic Materials Company,
Limited Appellants; v The Comptroller-General29.
The House of Lords observed The Comptroller-General of Patents,
Designs, and Trade Marks, having refused to register “Solio” as a
trade-mark in respect of photographic paper, because that the mark
proposed did not consist of any of the essential particulars required as
a condition of the registration of a new trade-mark, the appellants
appealed to the Board of Trade, who referred the appeal to the Court.
Kekewich J. held that the application had been rightly refused, and
his judgment was upheld by the Court of Appeal, The ground upon
which the Courts proceeded was that the word “Solio” had
reference to the character or quality of the goods, and was
therefore incapable of registration. Those learned judges being of
opinion that “Solio” suggested “Sol,” the sun, and therefore had
“reference to the character or quality of the goods”
Issues; Whether an “invented word” cannot be registered as a
trade-mark if it “has any reference to the character or quality of
the good
The court held that
A word which is “an invented word” within the meaning of clause
(d), may be registered as a trade-mark, although it “has reference
to the character or quality of the goods” within clause (e). Clauses
(d) and (e) are independent of each other.

The word “Solio” held to be capable of registration as a trade-mark

under class 39 in respect of photographic paper, and the decision of
the Court of Appeal reversed.
Lord Herschell;
There seems to me to be the broadest distinction between
the two cases. Under (e) any word in the English language
29
The Eastman Photographic Materials Company, Limited Appellants; v The Comptroller-General. [1898] A.C. 571

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 may serve as a trade-mark—the commonest word in the
language might be employed. In these circumstances it
would obviously have been out of the question to permit a
person by registering a trade-mark in respect of a
particular class of goods to obtain a monopoly of the use
of a word having reference to the character or quality of
those goods. The vocabulary of the English language is
common property: it belongs alike to all; and no one ought
to be permitted to prevent the other members of the
community from using for purposes of description a word
which has reference to the character or quality of goods.
But If a man has really invented a word to serve as his trademark, what
harm is done, what wrong is inflicted, if others be prevented from
employing it, and its use is limited in relation to any class or classes of
goods to the inventor?
An invented word is allowed to be registered as a trade-mark,
not as a reward of merit, but because its registration deprives
no member of the community of the rights which he possesses
to use the existing vocabulary as he pleases.
It may no doubt sometimes be difficult to determine whether a word is
an invented word or not. I do not think that the combination of two
English words is an invented word, even though the combination may
not have been in use before, nor do I think that a mere variation of
the orthography or termination of a word would be sufficient to
constitute an invented word, if to the eye or ear the same idea would
be conveyed as by the word in its ordinary form."
To constitute an invented word, within the meaning of the section, it
must be a word coined for the first time. “Such a word, “is of
necessity incapable of having reference to the character or quality of
goods, because, ex hypothesis, it is an entirely new unknown word
incapable of conveying anything.”
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 However, An invented word has of itself no meaning until one has been
attached to it.
Lord Macnaghten observed that; an invented word, if it is “new and
freshly coined” (to adapt an old and familiar quotation), it seems to
me that it is no objection that it may be traced to a foreign source, or
that it may contain a covert and skilful allusion to the character or
quality of the goods. I do not think that it is necessary that it should
be wholly meaningless
3. Distinctiveness of the marks: The courts assess the originality,
uniqueness, and recognition of the marks in the market.
The law under Section 4(2) of the Trademarks Act 2010 observes that
Where a sign is not inherently capable of distinguishing the
relevant goods or services, qualification for registration shall
depend on distinctiveness acquired through use.
Furthermore, Section 6 of the same Act is to the effect that, a person
planning to register a trademark can seek preliminary advice from the
registrar on whether the proposed trademark is inherently distinctive or
capable of distinguishing the goods or services of the intended business
from others. The registrar will provide advice based on this assessment.
The individual seeking advice must make the application in the
prescribed manner.
Case in point is STANDARD CAMERAS LD.'S APPLICATION
TO REGISTER A TRADE MARK30 MR. JUSTICE LLOYD-
JACOB S.C. Ld. applied to register a trade mark consisting of the
name "Robin Hood", written in a manner which included a device of
an archer and a target.
Evidence of distinctiveness was not tendered.

30
STANDARD CAMERAS LD.'S APPLICATION TO REGISTER A TRADE MARK. (1952) 69 RPC 125

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The application was refused on the ground that "Hood" and "Robin"
were common English names, that goods sold under the mark would
become known as "Robin Hood" goods, and that the mark was not a
name represented in a special or particular manner, the archer and
target being merely added matter illustrative of the words. S.C. Ld.
appealed to the Court, and contended upon the appeal that the mark
was registrable both as a name represented in a special or particular
manner, and as a distinctive composite device. It was contended by the
Registrar that any peculiarity lay solely in matter added to the name as
distinct from the manner in which the name itself was represented, and
that the added matter (being merely illustrative of the name) could not
render it distinctive.
In addition, the definition of a trademark by Lord Nicholls in
Scandecor Development AB versus Scandecor Marketing AB
[2002] FSR 122 at 33. Observes that, A Trademark Acts as a badge of
origin and stresses that inherent in the definition in the UK
Trademarks Act 1994 is the notion that distinctiveness as to business
source is the essential function of trademarks.
Furthermore, Section 9 of the Trademark’s Act 2010 is to the effect
that Distinctiveness requisite for registration under Part A.
(1) 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 following essential particulars—
(a) the name of a company, individual or firm, represented in a special
or particular manner;
(b) the signature of the Applicant for registration or of some
predecessor in his or her business;
(c) an invented word or invented words;

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(d) a word or words having no direct reference to the character or
quality of the goods or services, and not being according to its ordinary
signification, a geographical name or a surname; or
(e) any other distinctive mark, but a name, signature or word or words,
other than words within the descriptions in paragraphs (a), (b), (c) and
(d), shall not be registrable under this paragraph except upon evidence
of its distinctiveness.
(2) For the purposes of this section, “distinctive” means—
(a) in the case of a trademark relating to goods, adapted in relation to
the goods in respect of which the trademark is registered or proposed
to be registered, to distinguish goods with which the owner of the
trademark is or may be connected, in the course of trade, from goods
in the case of which no connection subsists; or
(b) in the case of a trademark relating to services, adapted in relation
to services in respect of which the trademark is registered or proposed
to be registered, to distinguish services with which the owner of the
trademark is or may be connected in the course of trade, from services
with the provision of which he or she is not connected, generally or,
where the trademark is registered or proposed to be registered subject
to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trademark is adapted to distinguish as
goods or services, the Registrar or the court may have regard to the
extent to which—
(a) the trademark is inherently adapted to distinguish goods or
services; and
(b) by reason of the use of the trademark or of any other circumstances,
the trademark is in fact adapted to distinguish goods or services.”

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 In relation to the case of Nairobi Java House Ltd v Mandela Auto
Spares Ltd31 the court observed that
Section 9 (1) makes it essential that the trademark shall contain one of
the essential characteristics. In relation to the Respondent which is a
limited liability company the name of the company or the signature of
the Applicant or and invented word or words. The first three
considerations do not apply to the Respondent. The trademark “Cafe’
Javas” does not have the company name of the Respondent which is
Mandela Auto Spares Ltd. Secondly it does not have the signature of
the Applicant. Thirdly it does not have an invented words or words
unless we accept that the word “Javas” is not “Java”. I will therefore
consider the other parts of section 9 (1) namely (d) and (e). As far as
item (d) is considered the trademark may consist of a word or words
having no direct reference to the character or quality of the goods or
services, and not being according to its ordinary signification, a
geographical name or a surname. In other words the words “Café
Javas” had to have no direct reference to the character or quality of
goods or services in respect of which it is registered. Secondly it should
not be a geographical name or surname. The word Java is a place in
Indonesia and is a geographical name referring to an Island. Secondly
from the Registrars ruling it is also means coffee. The word Café means
coffee.
I have checked the evidence and dictionary meanings relied on. Among
the evidence considered is that “Java Coffee” refers to coffee beans
produced in the Indonesian Island of Java. Several of the Café Java or
Java Café hits on the internet search relied on by the Appellant and
referred to by the Registrar of Trademarks refer to restaurants in the
USA, Australia and UK among others and where among other things
coffee is served. I have also considered the conclusion of the Registrar.

31
Supra 20

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 Court thus held that,
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.
4. Reputation of the marks: The courts evaluate the popularity,
goodwill, and fame of the marks among consumers.
In HAG II32 the Court observed that: "Consequently, as the Court
has stated on many occasions, the specific subject-matter of a trade
mark right is to grant the owner the right to use the mark for the
first marketing of a product and, in this way, to protect him against
competitors who would like to abuse the position and reputation of
the mark by selling products to which the mark has been improperly
affixed. To determine the exact effect of this exclusive right which
is granted to the owner of the mark, it is necessary to take account
of the essential function of the mark, which is to give the consumer
or final user a guarantee of the identity of the origin of the marked
product by enabling him to distinguish, without any possible
confusion, that product from others of a different provenance:
In the case of Nairobi Java House Ltd, v Mandela Auto Spares
Ltd33 court rejected the notion that the respondent’s trademark was in
place for over 7 years thus had established their reputation, court was
of the view that Nairobi Java House though not established in Uganda
had gained the trademark prior

32
Supra 27
33
Supra 20

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 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.
5. Intention of the infringers: The courts examine the motive,
knowledge, and conduct of the infringers in using the marks.
The court observed in the case of Nice House of Plastics v Hamidu
Lubega34 that While the intention of the defendant may indeed have

34
16

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 been to pass off his goods as those of the plaintiff, the incomplete
nature of the attempt leads the Court to the view that a case of
passing off has not been sufficiently made out.
Courts have further observed in the case of STANDARD SIGNS
UGANDA LTD V FRED LEO OGWANG T/A SHANDARD &
ANOR35 that I do not see any other intention for the deliberate
infringement of a trade name and a trademark other than for the sole
purpose of confusing the public and taking advantage of the
reputation and the good will they have acquired in the market.
In Tussaud v Tussaud [1890 M. 764] Chancery Division Vol. XLIV
679 an action was commenced by a company called “Madam
Tussaud & Sons Ltd” against Louis J. Tussaud. The plaintiff by their
writ claimed an injunction to restrain the respondent from applying to
the Registrar of Joint Stock Companies in England for registration
under the Companies Act any company to be incorporated under the
name of Louis Tussaud Ltd or any other name so nearly resembling
the name of the plaintiff company as to be calculated or likely to
mislead or deceive the public into the belief that the company being
incorporated was the same as the plaintiff company.
In granting the injunction sought in that case, Sterling, J at page 693
quoted with approval what Lord Justice Cotton stated in Turton v
Turton 42 Ch. D. 144 that:
“I do not in any way say that fraud is necessary to induce the court to
interfere except this, as I said before. When a man knows that the
natural consequence of what he is doing is to present his goods as the
goods of somebody else, then it is wrong on his part to continue that
act”.
Applying that authority to the instant case, the natural consequence
of what the 2nd defendant did was to present its products as the
35
Supra 19

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 plaintiff’s. The whole intention would be for passing off the
goods/products or services in respect of which the plaintiff’s
trademark was registered
6. Actual confusion among consumers: The courts look at the
perception, association, and behavior of consumers in relation to the
marks.
As already observed in the case of A-Plus Funeral Management Ltd v
A-Class Funeral Services (U) Ltd and URSB36 Justice Ssekaana
highlighted the significance of guarding against double registration,
citing the Pentecostal Assemblies of God case37, 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

36
Supra 24
37
Pentecostal Assemblies of God Limited v Pentecostal Assemblies of God Lira Limited HCCS No. 97 of 2015[2019]
UGHCCD 217

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 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
Similarly in WAVE VS WAVE EXPRESS, Uganda Registration Services
Bureau (URSB)38 Wave Inc brought opposition proceedings against the
registration of Wave Express on grounds similarity leading to a likelihood
of confusion, though the opponent’s Wave mark was not registered in
Uganda, they grounded their plea on the principle of well-known marks.
Wave Inc unsuccessfully argued that its mark is a well-known mark that
enjoyed protection under S.47 of the Ugandan Trademarks Act.
The Assistant Registrar of Trademarks reasoned and held that protection of
well-known marks is only applicable to defensive marks/registration and
that the same is not available to any well-known mark but rather to
“exceptionally well-known” marks under the provisions of Sections 47(2)
and 44 of the Ugandan Trademarks Act. The opposition succeeded.

The courts also consider the specific challenges and complexities that arise
in different scenarios, such as:
1. Use of foreign languages: The courts may check the meaning,
pronunciation, and transliteration of the marks, and the level of awareness
and understanding of the consumers of the foreign language.
As seen in the case of Nairobi Java House Ltd, v Mandela Auto Spares
Ltd where court observed that that the word Java is an ordinarily word,
that it is a geographical place in Indonesia, that it refers to coffee and
computer programming language and that this word is associated with

38
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Page | 51
the business of trademarks, like the word “Cafe’” it can be used as a
descriptive term to refer to such business in class 43 where coffee is
served. On the basis of that holding, the registrar erred in law not to find
that the word Java is a descriptive term as held above and properly
disclaimed by the appellant.
Use of the internet and social media: The courts may review the domain
names, website designs, online advertisements, and social media posts of
the parties, and the likelihood of confusion among online consumers.
According to Article15 of TRIPS39 Agreement defines a trade mark as any
sign, or any combination of signs, capable of distinguishing the goods or
services of one undertaking from those of other undertakings, shall be
capable of constituting a trademark. Such signs, in particular words
including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be
eligible for registration as trademarks In the world of domain names, the
only form of trademarks which are capable of being used as a domain name
is word mark
Esteemed scholar Mohammad S. Al Ramahi40 in his paper Internet domain
names & Trademark Law: Does the current legal scheme provide an
adequate protection to domain names under the US & the UK
jurisdictions? He notes that
The potential conflict between domain names and trademarks is far broader
than the problem of cybersquatting. The domain name system presents a
series of conflicts with the basic principles of global trade mark law.
Conflicts between trademark rights and domain name registrant occur in a
number of settings

39
Trade-Related Aspects of Intellectual Property Right
40
Al Ramahi, M.S., 2006, April. Internet Domain Names & Trademark Law: Does the Current Legal Scheme Provide
and Adequate Protection to Domain Names under the US & UK Jurisdictions?. In Paper delivered at the 21st
BILETA Conference: Globalisation and Harmonisation in Technology. Retrieved from
https://www.bileta.org.uk/wp-content/uploads/Internet-domain-names-and-trademark-law-does-the-current-
legal-scheme-provide-an-adequate-protection-to-domain-names.pdf Accessed at 1/27/2024 1:22:56 AM

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 1. An act of cybersquatting: Cybersquatting occurred when a third
party registering someone’s trademark as a domain name with the
intention to offer it back to the true owner at a substantial fee. The
law of Trademark interferes here to protect the true owner who has
the exclusive right to the trademark. Cybersquatting acts have been
criminalized in many countries in the world. This is to protect the
legal owners from
2. Genuine disputes: when two or more parties with independent and
legitimate rights for the same trademark in different lines of business
or jurisdictions seek the same domain name, disputes occur 41. This
kind of disputes occurred at two different levels, firstly, when the
same mark owned and used by different persons in respect of different
goods or services specialty.
Secondly, when the same mark owned and used by different persons
in different countries in relation to the same goods or services
territoriality.
The case of prince. Com is a good example of this. In Prince plc v
Prince Sports Group Inc42, Prince plc in the UK firstly registered
the domain name prince.com and was challenged by Prince Sports
Inc. in the US. The court decided that the name to remain with Prince
plc
 Use of composite or stylized marks: The courts may identify the
dominant or distinctive elements of the marks, and the effect of the
additional or decorative elements on the overall impression of the
marks.
 Use of generic or descriptive terms: The courts may determine the
degree of distinctiveness or secondary meaning acquired by the
marks, and the extent of protection or limitation afforded to the marks.

41
WilliamA.Tanenbaum.RightsandRemediesforthreecommontrademark-domainnamedisputes, at 9
42
Prince plc v Prince Sports Group Inc [1998] FSR 21

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 The court observed in A-plus v A-class that 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
The courts would not consider a confused or unobservant mourner
like DWIII but rather a reasonable and intelligent mourner who is
conversant with the details of companies engaged in the business of
funeral services in Uganda.
Furthermore, in Abro Industries Inc vs Abri General Traders43 The
law permits co-existence of a trademark & different enterprises can
use similar trademarks without interfering with each other’s
business44. The appellant argued that the Respondent’s mark ABRI
was phonetically and conceptually identical to it’s ABRO Trademark
Court ruled that there was no danger of confusion for the Appellant’s
mark and the Respondent’s mark to co-exist in Tanzania. Court
emphasized the rule that likelihood of confusion is determined by
nature of the commodity, the class of its purchasers, and the mode of

43
Abro Industries Inc vs Abri General Traders (Civil Appeal No. 323 of 2021) [2023] TZHC 19740 (7 June 2023)
44
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East Africa, in 2023 - ALN Accessed at 1/27/2024 1:57 AM

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 purchase and and found that the two marks were not similar and could
not cause confusion
In conclusion therefore, the courts apply the likelihood of confusion test on
a case-by-case basis, taking into account the totality of the circumstances
and the balance of interests of the parties. The courts may also refer to the
international standards and practices, such as the Nice Classification and
the WIPO Joint Recommendation, to guide their decisions.
6 HOW DO THE UGANDAN COURTS ALIGN THEIR
LIKELIHOOD OF CONFUSION DECISIONS WITH THE
INTERNATIONAL AND REGIONAL CONVENTIONS
AND AGREEMENTS ON TRADEMARK PROTECTION,
SUCH AS THE PARIS CONVENTION, THE TRIPS
AGREEMENT,
The Ugandan courts have adopted some of the principles and standards of
the international and regional conventions and agreements on trademark
protection, such as the Paris Convention, the TRIPS Agreement, in their
decisions on likelihood of confusion. For example:
In the case of Nairobi Java House appealed the Registrar’s decision to
the high court. In CIVIL APPEAL NO 13 OF 2015. The court observed
that since Kenya and Uganda are parties to the Paris Convention, it
should be noted that sections 44 and 45 of the Uganda Trademarks Act
(which domesticate some of the principles in the Paris Convention)
provide that the mark registered first in time takes priority to a later
trademark in case of resemblances.
Section 45 further gives the court jurisdiction to remove from the
Register a trademark which is registered after a foreign registered mark
in case the mark registered in Uganda is identical with or nearly
resembles a trademark of the plaintiff registered in a foreign country in
respect of the same services and registered prior in time.
Further, the court states that, in reference to Article 7 of the Treaty for
the Establishment of the East African Community (EAC), the decision
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of the Registrar stifles free movement of services within EAC by
restriction on the registration of a trademark registered prior in time in
Kenya on the ground of registration of a trademark albeit registered later
in time to Uganda.
6. CONCLUSION.
In conclusion, this paper has extensively explored the likelihood of
confusion test in intellectual property law within the context of Uganda,
drawing comparisons to international and regional conventions and
agreements on trademark protection.
Specifically, the examination encompassed key treaties such as the Paris
Convention, the TRIPS Agreement. The analysis revealed that while
Ugandan courts have integrated certain principles and standards from these
international frameworks into their decisions on likelihood of confusion,
deviations have also been observed.
The study highlights the unique legal landscape in Uganda, where the
Trademarks Act of 2010 serves as the primary legislation for trademark
registration and enforcement. However, challenges and inconsistencies
persist in the application and interpretation of the Act, raising questions
about how Ugandan courts address issues like the use of identical marks
and the adaptability of the likelihood of confusion test to changing market
conditions.
Examining key cases, such as Nice House of Plastics v Hamidu Lubega,
Vision Impex Limited v Sansa & Anor, Anglo Fabrics (Bolton) Ltd v
African Queen Ltd, Nairobi Java House Ltd, v Mandela Auto Spares
Ltd and A-Plus Funeral Management Ltd v A-Class Funeral Services
(U) Ltd and URSB provides insights into how Ugandan courts approach
trademark infringement and passing off claims. These cases emphasize the
importance of proving a likelihood of confusion, and the courts have
consistently considered factors like the similarity of marks, the nature of

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goods or services, the potential for consumer confusion and more recently
the Phonetic similarity test is not applicable in company registration.
In conclusion, while Uganda has made strides in aligning its laws with
international and regional conventions, there is room for refinement and
clarity in the application of the likelihood of confusion test. The study
recommends ongoing efforts to enhance legal principles, consider evolving
market dynamics, and ensure a robust framework for trademark protection
in Uganda.

By
WABOGA DAVID- Legal Researcher
For any inquiries reach out wabogadavid@gmail.com

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
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