[2024] UGRSB 5


# **THE REPUBLIC OF UGANDA IN THE MATTER OF TRADEMARK APPLICATION NO.2009/40233 "JJABARI" IN CLASS 30 IN THE NAME OF S. D. T GROUP OF COMPANIES LTD AND OPPOSITION THERETO BY KRYSTALLINE SALT LTD**

**KRYSTALLINE SALT LTD===========================OPPONENT VERSUS S. D. T GROUP OF COMPANIES=========================APPLICANT**

## **BEFORE: BIRUNGI DENIS: ASST. REGISTRAR TRADEMARKS**

## **A. Background**

- 1. On the 19th day of August 2009, the applicant filed application No. **UG/T/2009/40233** for registration of a trademark "**JJABARI"** under Part A in Class 30 of the Nice Classification of Goods and Services in respect of Breads, biscuits, cakes, pastry, confectionery, ices, flour and preparations made from cereals, salt, mustard, paper, vinegar, sauces, spices and preparations from salt. The applicant was issued with a gazette notice, which was published in the Uganda Gazette. - 2. The opponent is a Kenyan company carrying on the business of salt manufacturing in East Africa and other countries, and is a holder of **"HABARI"** trademark mark registered in Uganda under trademark number **UG/T/1994/19105** with respect to bread, biscuits, cakes, pastry, confectionery, ices, flour, and preparations made from cereals, salt, mustard, pepper, vinegar, sauces, spices and preparations from salt. The opponent acquired the rights over the trademark vide a deed of assignment dated 20 May 2010. A certificate of assignment was subsequently issued on 15 May 2019, with the assignment effective retrospectively, that is on the 09 September 2013. The ground for opposition is that the mark "Jabbari" is confusingly similar to "Habari"

owned by the opponents. The opponent predominantly uses its trademark for sale and marketing of salt.

- 3. This opposition was filed in 2009. A different Registrar first heard it. Upon following up on the delivery of the ruling by the opponent's advocates, the case was assigned to myself for further management. The record did not have submissions despite the existence of a letter dated 13 August 2010, communicating the timelines given for filing of submissions at the time. - 4. There was also no record of proceedings to ascertain whether scheduling had been conducted. Given the time lag, and in the interest of justice, the Office issued a hearing notice dated 7 November 2023 inviting both parties for a mention and fresh scheduling. The opponent's advocates contended that the advocates of the applicant had since ceased to have instructions in the matter and that they could not effect service of the hearing notice to the applicant, as they did not find them at the registered physical address. - 5. The Office administratively directed that service instead be effected by registered post and a subsequent hearing notice dated 12 February 2024 was issued for service. The opponent's advocates, accordingly served by registered post, and filed an affidavit of service to that effect. On that basis, the matter proceeded albeit without the applicant participating at this stage. While the applicant has not filed written submissions, their case is clearly made out in the counterstatement as well as the statutory declaration, which I have carefully considered in resolution of the issues.

#### **B. ISSUES**

6. The matter came up for mention and scheduling on 7th March 2024. Counsel Kiwunda Matthew of Muwema and Company Advocates represented the opponent, while the applicant was not represented*.* The following issues were framed for determination.

- (i) Whether the applicant's trademark is confusingly similar to the opponent's registered trademark? - (ii) Remedies available to parties

### **C. RESOLUTION**

# *Issue No.1. Whether the applicant's trademark is confusingly similar to the opponent's registered trademark No. 019105*

7. To succeed in opposition proceedings on grounds that the applied for mark is confusingly similar to its trademark, the opponent must prove that the opposed mark is *identical* with or *nearly resembles* a trademark, which is already registered, with respect to same goods or services or same description of goods or services. This ground of opposition is premised on the provisions of section 25 of the Trademarks Act, 2010 that prohibits registration of identical or nearly resembling marks. I reproduce section 25 below;

**"***25. Prohibition of registration of identical and resembling trademarks (1)Subject to [section 27,](https://ulii.org/akn/ug/act/2010/17/eng@2010-09-03#part_III__sec_27) a trademark relating to goods shall not be registered in respect of goods or description of goods that is identical with or nearly resembles a trademark belonging to a different owner and already on the register 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."*

8. The question therefore is whether the applicant's mark and that of the opponent are similar so as to lead to a likelihood of confusion within the meaning of section 25. In determining whether there is sufficient degree of similarity so as to lead to likelihood of confusion, I adopt the test propounded by Parker J in **Pianotist Co's application (1906) 23 RPC 774 at page 777** where he stated;

"*You must take the two words. You must judge of them both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy these goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods by the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other gain illicit benefit, but there will be a confusion in the minds of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse registration in that case*".

9. In line with the above statement, I set out the trademarks in question below, for a side-by-side comparison and assessment.

| Applicant's<br>Mark-application | Opponent's<br>registered<br>trademark | |-------------------------------------------|------------------------------------------| | No.40233 | No.<br>019105 | | | | | Breads,<br>biscuits,<br>cakes,<br>pastry, | bread , biscuits , cakes , pastry, | | confectionery,<br>ices,<br>flour<br>and | confectionery,<br>ices,<br>flour,<br>and | | preparations made from cereals, salt, | preparations made from cereals, salt, | | mustard,<br>paper,<br>vinegar,<br>sauces, | mustard, pepper, vinegar, sauces, | | spices and preparations from salt. | spices and preparations from salt | | | |

- *10.* In assessing similarity and likelihood of confusion, each mark must be looked at as a whole in comparison to the other. Each component must be examined to get the overall impression. Authorities have stated however, that this does not mean, that one may not first examine each of the individual features of the get-up of the mark in turn and that it may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed of. (*see Case C-286/04 P Eurocermex v OHIM [2005] ECR 1-5797, paragraphs 22 and 23*). While an assessment of individual components is permissible, the purpose is to get an overall impression created by the mark for a conclusive determination. - *11.* In assessing similarity and likelihood of confusion, the two marks must be compared in terms of their visual, aural and conceptual similarity and the overall impression created. There is no doubt that the applicant's mark is similar to the opponent's mark. Visually, both trademarks are similar with regard to the following features; they contain devices of coconut trees in the same fashion and design, with an older and taller coconut tree overlooking a young shorter coconut tree. The coconut trees on both marks have images of birds hovering around over them almost in the same design and direction. - *12.* The words "JJABARI" and "HABARI" are also visually similar differentiated by the letter "H" in the latter and letters "JJ" in the former. On both marks, the words are placed on the same location on the mark, at the base of the coconut trees, which too is arranged in the same fashion and design reflecting what appears to be layers of soil, on which the trees are growing. The entire getup of the applicant's trademark is a near replica of the opponent's mark with minor differences which include a red circle with a white coloring inside located on the upper right side of the taller coconut tree as well as what appears to be a half moon device in green color, hinged on a stand located on the right side,

below the red circular device. The minor differences of letter "H" and "JJ"do not create sufficient distinction.

- *13.* Phonetically, the applicant's "JJABARI" trademark is confusingly similar to the opponent's "HABARI" trademark. The sound produced by pronouncing the word "JJABARI" and "HABARI" is very similar and is likely to cause confusion to an ordinary customer. - 14. In **Canon Kabushiki Kaisha and Metro-Goldwyn-Meyer Inc. Case No C-39/97** at para 28 and 29 of the ruling, Court explained the importance registration of distinct marks as follows; "*Moreover, according to the settled case-law of the Court, the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-10/89 HAG GF (HAG II) [1990] ECR I-3711, paragraphs 14 and 13)".* At para 29, Court adds *"accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive (see SABEL, paragraphs 16 to 18)*" - *15.* The above dictum underscores the fundamental policy behind registration of distinct marks that do not confuse consumers. The rationale is inextricably linked to another public policy objective of ensuring fair competition in the market. The applicant's mark as presented, in a manner very similar to the opponent's mark is contrary to these policy objectives.

- *16.* Besides the visual, conceptual and aural similarity between the two marks, the applicant's goods as can be seen on the illustration in paragraph 9, are the same as those of the opponent. In the case of **Standard Signs (U) Ltd vs. Standard Signs Ltd & another HCCS 540/2006** Lady Justice Obura stated that, *"the test is whether an average customer acting with reasonable care would be likely to be confused by the article complained of"*. There is no doubt that an average consumer would confuse the applicant's mark with that of the opponent. The likelihood of confusion is even more heighted when the goods are the same or are closely related just like those of the applicant and the opponent. For those reasons, the opposition succeeds. - *17.* Each party shall bear its own costs.

I so Order.

Given under my hand, this **02 day of May 2024**


Digitally signed by Birungi Denis Location: Uganda Registration Services Bureau Date: 2024.05.02 11:49:12 +03'00'

Birungi Denis Ass. Registrar of Trademark