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The scope of international protection that should be extended to prior-registered trademarks

The scope of international protection that should be extended to prior-registered trademarks

Nairobi Java House Ltd v Mandela Auto Spares Ltd

High Court of Uganda, at Kampala

Civil Appeal No. 13 of 2015

Hon.Mr. Justice Christopher Madrama Izama

February 9, 2016.

Reported by Linda Awuor & Kevin Kakai

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Brief Facts:

On August 15, 2013, the appellant in Civil Appeal No 13 of 2015, Nairobi Java House (“Java House”) submitted two trademark applications to the registrar of trademarks for registration in Class 43: Trademark Application No 48062 ‘Java House and Java Sun’ and Trademark Application No 48063 ‘Nairobi Java House’. The trademark applications submitted by Java House contained two features that were to prove extremely critical in the legal proceedings that ensued and the decision on appeal by the Commercial Court. The first key feature was that registration was applied for in Part B of the register. Part B registration was in respect of marks which lacked sufficient distinctiveness to be included in Part A, which required inherent distinctiveness. The second key feature was that Java House’s applications were disclaimed. The applications were opposed by Mandela Auto Spares (“MAS”), the proprietor of the Javas and Café Javas trademark in Uganda. Principally, MAS argued that the marks submitted for registration by Java House were, visually and phonetically, confusing and or deceptively similar to its marks. MAS argued that taken as a whole, the two competing marks were similar and their co-existence would cause confusion among members of the public. In response, Java House asserted that on an objective inspection, the competing marks were visually, phonetically and conceptually distinct. Secondly, and fundamentally, Java House argued that its composite marks incorporated the common English word ‘java’, which, in the trade that it was synonymous with, was recognized as referring to coffee and a place where various variations of coffee were served. Accordingly, Java House asserted that the word ‘java’ was trade descriptive and it [Java House] was entitled to use it in a trademark law sense provided that no claim of exclusivity was imposed. The registrar, in a ruling delivered on 21 May 2015, found in favour of MAS, determining that although the competing marks were visually dissimilar, they both share the common word feature ‘java’. The registrar ruled that the dictionary definition of the word ‘java’ was coffee, and not coffee-shops or restaurants. Here, the registrar reasoned that although ‘java’ described coffee, it did not describe what coffee was used for, how it was sold or other usage. The registrar further decided that there was no evidence that consumers in Uganda perceived the word ‘java’ to refer to restaurant services. Finally, the registrar ruled that on account of the similar word feature ‘java’ in both marks, there would be a likelihood of confusion. Java House filed an appeal to the Commercial Court.

Issues:

(i)     What factors were to be considered in registering a trademark in Uganda?

(ii)   What was the relevance of the Paris Convention with regard to registration of trademarks in member countries?

(iii)  What was the impact of the Treaty Establishing EAC with regard to trademarks?

Intellectual property law – trademarks – registration of trademarks – factors to consider in registration of trademarks – whether the Nairobi Java House’s trademark was capable of being distinguished from Mandela Auto Spares Ltd’s trademark – whether the trademarks registrar was wrong in refusing to register Nairobi Java House’s trademark –Trademarks Act (Uganda), 2010 Section 9, 10, 26.

Intellectual property law – trademarks – registration of trademarks under the Paris Conventionfor the Protection of Industrial Property – effect of registration of a trademark in member countries – whether the registrar erred in refusing to register Nairobi Java House’s trade mark –Paris Conventionfor the Protection of Industrial Property article 6.

International law – East African Community – free movement of services – whether the registrar stifled free movement of services within the East African Community –Treaty For The Establishment of The East African Community, article 7 (1) (c); Trademarks Act (Uganda), 2010, sections 44 &45.

Relevant provisions of law:

The Trademarks Act, 2010 (Uganda).

Section 9 – 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;

(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.

Section 10 – Capability of distinguishing requisite for registration under Part B.

(1)  A trademark relating to goods to be registered in Part B of the register shall be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the owner of the trademark is or may be connected in the course of trade from goods in the case where no connection subsists, generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to the use within the extent of the registration.

(2)  A trademark relating to services to be registered in Part B of the register shall be capable, in relation to services in respect of which it is registered or proposed to be registered, of distinguishing services with the provision of which the owner of the mark is or may be connected in the course of business from services with the provision of which he or she is not so 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 capable of distinguishing goods or services, the registrar or court may have regard to the extent to which—

(a)  the trademark is inherently capable of distinguishing goods or services; and

(b)  by reason of the use of the trademark or of any other circumstances, the trademark is in fact capable of distinguishing goods or services.

(4)  A trademark may be registered in Part B notwithstanding any registration in Part A in the name of the same owner of the same trademark or a part or parts of the trademark.

Section 26 – Application for registration of identical or resembling trademarks.

(1)  Where separate applications are made by different persons to be registered by the owner as a trademark or if in the case of a trademark relating to—

(a)  goods it contains matter common to the trade or otherwise of a non-distinctive character; or

(b)  services it contains matter common to the provision of services of that description or otherwise of non-distinctive character, the registrar or the court, in deciding whether the trademark shall be entered or shall remain on the register, may require, as a condition of its being on the register—

(i)  that the owner shall disclaim any right to the exclusive use of any part of the trademark or to the exclusive use of all or any portion of the matter, to the exclusive use of which the registrar or court holds him or her not to be entitled; or

(ii)  that he or she shall make such other disclaimer as the registrar or court may consider necessary for the purpose of defining his or her rights under the registration.

(2)  A disclaimer on the register shall not affect rights of the owner of a trademark except where the disclaimer would arise out of the registration of the trademark in respect of which the disclaimer is made.

Section 44 – Protection of marks registered in a country of origin.

(1)  Subject to subsection (3), the registrar may refuse to register a trademark relating to goods in respect of goods or description of goods if it is proved to his or her satisfaction by the person opposing the application for registration that the mark is identical with or nearly resembles a trademark which is already registered in respect of—

(a)  the same goods;

(b)  the same description of goods; or

(c)   services or a description of services which are associated with those goods or goods of that description, in a country or place from which the goods originate.

(2)  Subject to subsection (3), the registrar may refuse to register any trademark relating to services in respect of any services or description of services if it is proved to his or her satisfaction by the person opposing the application for registration that the mark is identical with or nearly resembles a trademark which is already registered in respect of—

(a)  the same services;

(b)  the same description of services; or

(c)   goods or a description of goods which are associated with those services or services of that description, in a country or place from which the services originate.

Section 45 – Removal of trademark from register on proof of prior registration in country of origin.

(1)  Subject to subsection (3), the court may, on application in writing within seven years from the registration in Uganda of a trademark relating to goods by a person aggrieved by the registration, remove that trademark from the register if it is proved to the satisfaction of the court that the trademark is identical with or nearly resembles a trademark which was, prior to the registration in Uganda of the trademark, registered in respect of—

(d)  the same goods;

(e)   the same description of goods; or

(f)     services or a description of services which are associated with those goods or goods of that description, in a country or place from which the goods originate.

(2)  Subject to subsection (3), the court may, on application in writing made within seven years from the registration in Uganda of a trademark relating to services by a person aggrieved by the registration, remove that trademark from the register if it is proved to the satisfaction of the court that the trademark is identical with or nearly resembles a trademark which was, prior to the registration in Uganda of the trademark referred to subsection (1), registered in respect of—

(a)   the same services;

(b)   the same description of services; or

(c)   goods or a description of goods which are associated with those services or services of that description, in a country or place from which the services originate.

Treaty For The Establishment of The East African Community (as amended on December 14th, 2006 and August 20th, 2007)

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;

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.

Article 6 – Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries

(1)  The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.

(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.

Held:

  1. The registration of the trademark was made under section 12 of the Trademarks Act, 2010. Section 12 (2) prescribed that an objection to an application for registration which was made by notice should have been in the prescribed manner and should have included a statement of the grounds of objection.
  2. Section 12 (9) of the Trademarks Act, 2010 provided that in an appeal under the section, no further grounds of objection to the registration of a trademark would be allowed to be taken. The section expressly referred to and forbade further grounds of objection to the application for registration. It envisaged an appeal from a decision allowing registration of trademark after objection proceedings.
  3. The Assistant Registrar did not take into account the prior registration of the Appellant in Nairobi, Kenya in respect of the same trademarks sought   to   be   registered in   Uganda.   That influenced the   legal   basis for consideration of the issues in the application for registration.
  4. Section 10 of the Uganda Trademarks Act 2010 provided that the capability of distinguishing was a requisite for registration under Part B. It went on to give the criteria   for considerations whether to register for goods under section 10 (1) and for services under section 10 (2) of the Trademarks Act.
  5. Where a statute was clear and unambiguous, the first resort of a court of law was to interpret it as it was, based on the jurisdiction of the High Court under section 14 of the Judicature Act cap 13 laws of Uganda. Under section 14 (2) thereof, the jurisdiction of the High Court was to be exercised in conformity with the written law in force.
  6. Section 10 {2) provided that the capability to distinguish should have been in relation to services in respect of which it had been registered or proposed to be registered. The capability to distinguish should therefore have been in relation to particular services. The Trade mark sought to be registered should have been capable of distinguishing particular services of the owner thereof from other similar services not of the owner or not connected generally with that of the owner.
  7. The second criteria for consideration for registration was section 10 {3) which gave two elements namely: The Registrar or Court may have had regard to the extent to which (a) the trademark was inherently capable of distinguishing goods or services; and (b) by reason of the use of the trademark or of any other circumstances, the trademark was in fact capable of distinguishing goods or services.
  8. The Registrar committed a material and distinct error of evaluation and principle in finding that the word Java was not a common English noun   that was synonymous with the   business   of   coffee   shops   and restaurants.
  9. Section 8 of the Trademarks Act 2010 provided that a trademark relating to goods or services would be registered in respect of particular goods or classes of goods. Secondly section 9 provided   that   in order   for   a trademark other   than   a certification mark to be registered in Part A of the register, the trademark should have contained or consisted of at least one of the essential particulars.
  10. The   basic   difference   between   section   9   and   section   10   on distinguishing was that under section 9 the trademark was to be distinctive and registered under Part A. Under section 10 it should have been capable of distinguishing the goods or services even if an owner had first been registered under Part A and it was registered under Part B.
  11. Section 9 (1) made it essential that the trademark should have contained   one of the essential characteristics, in relation to the Respondent which was a limited liability company , the name of the company   or the signature   of the Applicant   or and invented word(s). The trademark “Cafe’ Javas” did not have the company name of the Respondent which was Mandela Auto Spares Ltd. Secondly it did not have the signature of the Applicant. Thirdly it did not have an invented word(s) unless the Court accepted that the word “Javas” was not “Java”.
  12. Section 9 (1) (d) provided that the trademark may have consisted of a word(s) 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 “Cafe Javas” had to have no direct reference to the character or quality of goods or services in respect of which it was registered. Secondly it should have not been a geographical name or surname. The word Java was a place in Indonesia and was a geographical name referring to an Island. Thirdly, from the Registrars ruling it also meant coffee. The word Cafe meant coffee.
  13. The Registrar erred in two aspects on a matter of fact. Firstly he rightly established that the word “Java” meant a geographical place in Indonesia. Secondly he erred not to find that the word   ‘Java” was certainly associated with coffee and restaurants. The Registrar also erred in law not to apply section 26 (1) (b) to find that the word “Java” which he held played a standout role was common to the   provision of services of the description on class 43 of the Trademarks Act 2010.
  14. Section 9(3) of the Trademarks Act provided that in determining whether the mark   had been adapted to distinguish   goods or services the Court or Registrar should have had regard to the extent to which the trademark was inherently adapted to distinguish goods or services and by reason of the use of the trademark or of any other circumstances, the trademark was in fact adapted to distinguish goods or services. The word “Java” was properly disclaimed by the Appellant in terms of section 26 of the Trademarks Act 2010.
  15. The Civil Procedure Rules, Order 43 rule 20 permitted the Court on the basis of exhaustive evaluation of evidence to reconsider the decision of a lower tribunal or court on a new basis. In other words the Court could decide the Appeal on some other ground and issue provided it was supported by the evidence.
  16. What needed to   be considered before   considering likelihood of confusion or similarity of the opponent’s marks was which mark took priority. It was 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 by a different member state of the Community.
  17. The Applicant’s trademark was a foreign registered trademark having been registered in Kenya and the owner thereof who was the Appellant sought to register its mark in Uganda as well. The international legal framework was inter alia that of the Paris Convention for the Protection of Industrial Property 1883 to which Uganda and Kenya were parties and secondly the provisions of the Ugandan Law on the matter if any.
  18. Article 6 of the Paris Convention provided inter alia in paragraph A (1), (2) and paragraph B that countries   of the Union should have accepted trademarks registered in a country of the Union for filing. Secondly a country of the Union may have required the   Applicant   of a foreign   registered   trademark to produce   a certificate of registration of the trademark in the country of origin. Thirdly it provided that the trademark may neither have been denied registration nor invalidated except inter   alia when they   infringed   rights   acquired   by third parties where protection was claimed, when they were devoid of any distinctive character or were contrary to morality or public order among other grounds.
  19. Paragraph C in determining whether a trademark was eligible for   protection provided the criteria for consideration was as ;considering all the factual circumstances particularly the length of time the mark had been in use, also no trademark was to be refused in the other countries of the Union for the sole reason that it differed from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and did not affect its identity in the form in which it had been registered in the said country of origin.
  20. The Ugandan Trademarks Act 2010 had domesticated some of the principles of the Paris Convention for the Protection of Industrial Property under sections 44 and 45 thereof. Section 44 (1) gave the registrar power to refuse a trademark where it resembled or was identical with a foreign registered trademark registered prior in time. Section 44 (2) gave the Registrar discretionary powers to refuse to register a foreign registered trademark on the ground that the mark was identical with or nearly resembled a trademark which was already registered in respect of the same services, the same description of services; or goods or a description of goods or services which were associated with those services or services with that description in a country or place from which the services originate.
  21. Section 44 (3) provided   that the Registrar should not refuse the application for registration in Uganda if the Applicant proved continuous prior use of the mark before the registration of the foreign trademark   in the country of origin. The general principle that emerged from sections 44 and 45 of the Trademarks Act 2010 of Uganda was that the mark registered first in time took priority to a later trademark in case of resemblances.
  22. Section 45 of the Ugandan Trademarks Act 2010 further gave the Court jurisdiction to remove from the register a trademark which   was registered in time after   a foreign   registered   mark   in case the trademarks registered in Uganda were identical with or nearly resembled a trademark of the Plaintiff registered in a foreign country in respect of the same services and registered prior in time.
  23. Articles 7 of the Treaty for the Establishment of the East African Community provided that member states, which included Kenya and Uganda, should enact similar laws with regard to the removal of non-tariff and other technical barriers to trade and measures that restricted free movement of goods and services.
  24. Sections 44 and 45 of the Trademarks Act 2010 supported freedom of movement of goods and services in the East African Community within the limitations contained in the sections. Article 7 provided that there should be free   movement of   goods   and   persons,   labour,   services, capital information and technology. The decision of the Registrar stifled 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.
  25. The word Java was an ordinary word. It was a geographical   place   in   Indonesia, it referred   to   coffee   and   computer programming language and that word was associated with the business of trademarks, like the word “Cafe”‘ it could be used as a descriptive term to refer to such business in class 43 where coffee was served. On that basis, the registrar erred in law not to find that the word Java was a descriptive term and properly disclaimed by the Appellant.
  26. There was no survey which had been conducted and the opinion of two deponents was insufficient to reach the conclusion that the registrar reached of confusion of members of the public. The concept of an average consumer must import representativeness of the opinion or likelihood of confusion. There was no evidence of the kind of clientele the Respondent had and who was a reasonable customer.
  27. Based on the evidence the two marks were dissimilar and the likelihood of confusion was not supported by evidence and therefore the conclusion of the Registrar was not supported.

 Orders of the court:

  1. Grounds 1, 5, 6, 7 and 8 of the Notice of motion are allowed.
  2. The Appellant’s appeal succeeded with costs.
  3. The decision of the Registrar dated May 21st, 2015 was set aside.
  4. A consequential order issued compelling the registrar to allow registration of the Appellants     application   No.   48062/2013   and   Trademark   Application   No. 48063/2013 subject   to   conditions of   disclaimer   under   section   26   of   the Trademarks Act 2010.

 Relevance to Kenyan Situation

The Constitution of Kenya under Article 11(2)(c) states that the state shall promote the intellectual property rights of the people of Kenya. Also under Article 40(5) it states that the State shall support, promote and protect the intellectual property rights of the people of Kenya.

In Kenya the main statute dealing with trademarks is the Trade Marks Act. Under this Act which is to a great extent similar to the Ugandan Trademarks Act, 2010 the mark which is to be registered should be distinctive and should be capable of being distinguished. This is provided for under sections 12 and 13 respectively.

Kenyan courts have dealt with a number of cases involving registration of trademarks which seem to have a high probability of causing confusion if registered, for instance in Glaxo Group Ltd v Syner-Med Pharmaceuticals Ltd (Misc Application 792 of 2009) where the Court allowed an opposition to the registration of the respondents trademark ‘SYNERCEF’ on the ground that it was so similar, phonetically and visually to the registered trade mark of the appellant “ZINACEF” to an extent that it would cause confusion and deception in the minds of the public.

In Pharmaken Limited v Laboratories Almirall S.A (Civil Appeal No. 616 of 2012), it was held that the registrar erred in refusing to register the Applicant/Appellant’s trademark “ZYRTAL MR” on the ground that it was similar and resembled the respondents trademark “AIRTAL” . The Court further held that the marks were clearly phonetically and visually different and were not similar or identical, the goods were by colour, shape and size different. The goods were by constitution neither identical nor similar. The likelihood of the goods being dealt with by the usual public was meagre. The possibility of a confusion arising therefore was also meagre.

The present case is relevant to Kenya since Kenya is a party to the Paris Convention and the Treaty of the establishment of the East African Community and how the present case was determined will assist Kenyan courts placed in a similar position as the Court was to effectively and properly handle it.

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