[2024] UGRSB 17


# THE REPUBLIC OF UGANDA IN THE MATTER OF THE COMPANIES CAP 106 IN THE MATTER OF ICEA LION GENERAL INSURANCE COMPANY LIMITED AND LION TRADEMARK NO. S UG/T/2016/055973, UG/T/2016/055975 AND UG/T/2016/055974 SANLAM GENERAL ASSURANCE UGANDA LIMITED::::::::::::::::::::::::::::::::::::

**VERSUS**

ICEA LION GENERAL INSURANCE COMPANY (U) LTD::::::::::::::::::::::::::::::::::::

# **RULING**

# Before Muliisa Solomon, Registrar of Companies.

## A. Background

- 1. The applicant, through its advocates, Engoru Mutebi Advocates, filed this complaint on the 26^th August 2021 vide a letter. In that letter, it contended that the applicant is a company licensed to provide insurance services in Uganda. That the applicant is also the registered proprietor of trademark numbers UG/T/2016/055973, UG/T/2016/055975 and UG/T/2016/055975 in respect of services under class 36 of the Nice Classification of goods and services, which it refers as "the lion trademarks". The applicant states that it registered the said trademarks on 14^th September 2016 and has since used them in its business acquiring significant good will and reputation as a result. - 2. The applicant states that it learnt of the respondent's change of name on the $19^th$ of February 2021 from ICEA General Insurance Company limited to ICEA Lion **General Insurance Company (u) Limited.** The dispute centers on the addition of the word "LION" which, the applicant contends, is confusingly similar with its registered trademarks mentioned above. It states at para 7 of the complaint, that "the use and existence of the name ICEA LION GENERAL INSURANCE COMPANY (U) LIMITED as a company name on the register of companies and existence of the Lion trademarks on the register of trademarks has caused


confusion to the public and is going to continue to cause confusion among the consumers in the public regarding source of services and also in respect of false *connection between providers of the services".*

- 3. The applicant prayed for the Registrar to exercise powers under section 37 (1) and 40 (2) of the Companies Act, Cap 106 and direct the Respondent to change its name or be struck out or be barred from using the name. Parties filed their respective evidence by way of statutory declaration. The respondent filed its statutory declaration on $30^th$ November 2021 and the applicant on $22^nd$ November 2021. - 4. In its statutory declaration in support of the application, the applicant notes that in 2017, it acquired a company in the names of Lion Assurance Company $(U)$ limited (LAC). That subsequently, the applicant and the said LAC amalgamated. The applicant attached a certificate of amalgamation to that effect. That as part of its post-amalgamation branding, the company adopted the tagline "LION" **ASSURANCE IS NOW PART OF SANLAM**". In its statutory declaration, the Respondent traces its history from 1895 as part of the LION ICEA group which was previously known as Insurance Company of East Africa. That the ICEA Lion brand was born of a business reorganization involving Lion of Kenya Insurance Company limited, and Insurance Company of East Africa (ICEA) which took place in 2012. - 5. By letter dated 23^rd February 2022, the Registrar directed the parties to file written submissions. Mutebi Engoru Advocates represented the applicant, while MMAKs Advocates represented the Respondent. The advocates duly filed their respective submissions. - 6. In their written submissions, Counsel for the applicant contends that the Respondent's change of name to include the word "LION" made the name undesirable within the meaning of section 36 of the Companies Act, due to the same name being owned as a trademark by the applicant. The applicant premises its complaint/application on section 36 $(2)$ , 37 $(2)$ and 40 $(2)$ of the Companies Act, and seeks remedies under the said sections, to order the Respondent to change name, or that the name be struck off or that the respondent be barred from using the said name.

7. In their submissions, Counsel for the Respondent disputes that the Respondent's name is misleading or deceptive or similar to the applicant's within the meaning of sections, 36, 37 or 40 and contends that the name change was effected legally following all legal procedures, including advertisement in the gazette, for which no complaint was raised, leading to the issuance of the certificate of name change.

### **B.** *The question of jurisdiction*

8. While none of the advocates raised a jurisdictional challenge or objection, I find it pertinent to address it because jurisdiction is a serious issue. The applicant seeks remedies under section 37 (2) and 40 (2) of the Companies Act, for actions, it alleges infringe its registered trademark or are likely to cause confusion in the market. The questions is whether the Registrar of companies has jurisdiction to determine such a cause of action. I reproduce the two sections and analyze them below;

### 37. Power to require company to abandon misleading name

"(1) Where in the registrars' opinion the name by which a company is registered gives a misleading indication of the nature of its activities as to be likely to cause harm to the public, the registrar may direct it to change its name.

(2) The direction shall, be complied with within six weeks from the date of the direction or such longer period as the registrar may think fit to allow. $2(a)$ The registrar may strike the company off the register after the expiration of the time specified in subsection (2).

(3) The company may, within a period of twenty-one days from the date of the direction, apply to the court to set it aside and the court may set the direction or the striking off aside or confirm it and, if it confirms the direction, shall specify a period within which it must be complied with.

(4) Where a company makes default in complying with a direction under this section, it is liable to a fine of twenty-five currency points and, for continued contravention, to a daily default fine of five currency points.

(5) Where a company changes its name under this section, the registrar shall enter the new name on the register in place of the former name and shall issue a certificate of incorporation altered to meet the circumstances of the case and the change of name has effect from the date on which the altered certificate is issued.

$(6)$ A change of name by a company under this section does not affect any of the rights or obligations of the company or render defective any legal proceedings by or against it and any legal proceedings that might have been continued or *commenced against it by its former name may be continued or commenced against* it by its new name"

- 9. The above section grants discretion to the Registrar to order change of name, where he or she is of the opinion that the name "gives a misleading indication of the nature of its activities as to be likely to cause harm to the public". The applicant's case is that because it is the registered owner of the Lion trademarks described earlier, that the use of the Respondent's name will cause confusion because the applicant uses the Lion trademarks for same or similar services. - 10. I do not think section 37 (2) is applicable in this context. This is because, before the $10$ -Registrar can exercise discretion to order change of name, he or she must form an opinion that the name gives a misleading indication. In the context of this application, it would require the Registrar to determine whether the change of name constitutes infringement of the applicant's trademarks or whether such use is passing off of the applicant's goods. These matters are outside the jurisdiction of the Registrar of companies. Issues of Trademark infringement are governed by the Trademarks Act, Cap 225 and are outside the mandate of the Registrar of Companies. While issues of passing off based on common law and are only determined by Courts of Judicature. - 11. Jurisdiction of a hearing officer or tribunal is a serious issue. A decision taken without jurisdiction is invalid. Jurisdiction is a creature of statute and cannot be conferred by either consent or complacency of the parties nor by acquiescent of the presiding officer. Where either of the party does not raise a jurisdictional challenge and it comes to the attention of the presiding officer, the officer has an obligation to investigate it. Exercising jurisdiction, which is not conferred by


statute, is a usurpation of powers and an act done ultra-vires. In **Owners of Motor** Vessel "Lillians" v Caltex Oil Kenya Limited [1989] KLR 1 in which Nyarangi JA at page 13 explained the concept of jurisdiction as follows:

"By jurisdiction, is meant the authority which a court has to decide matters that are before it or take cognizance of matters presented in a formal way for its decision. The limits of this authority are imposed by statute, charter or commission under which the court is constituted and may be extended or restricted by the like means. If no restriction or limit is imposed the jurisdiction is said to be unlimited. A limitation may be either as to the kind and nature of the actions and matters which the particular court has cognizance or as to the area over which the jurisdiction shall extend, or it may partake both these characteristics. If the jurisdiction of an inferior court or tribunal (including an arbitrator) depends on the existence of a particular state of facts, the court or tribunal must inquire into the existence of the facts in order to decide whether it had jurisdiction; but, except where the court or tribunal has been given power to *determine conclusively whether the facts exist. Where the court takes it upon itself* to exercise a jurisdiction which it does not possess, its decision amounts to *nothing. Jurisdiction must be acquired before judgment is given."*

12. In addition, in the case of **Desai v Warsama [1967] 1 EA 351**, Court held that "it is well established law that a judgement of court without jurisdiction is a nullity". Jurisdiction has different categories. For this matter, the category in issue is subject matter jurisdiction. In Ozuu Brothers Enterprises v Ayikoru Civil Revision No.2 **of 2016**, Justice Stephen Mubiru explained jurisdiction as involving many features; "The term may have different meanings in different contexts. It has been defined as the limits imposed on the power of a validly constituted court to hear and determine issues between persons seeking to avail themselves of its process by reference to the subject matter of the issues or to the persons between whom the issues are joined or to the kind of relief sought (See: A. G of Lagos State v Dosunmu (1989) 3 NWLR pt.111, pg. 552 S C). It therefore means and includes any authority *conferred by the law upon the court to decide or adjudicate any dispute between* the parties or pass judgment or order. A court cannot entertain a cause which it has no jurisdiction to adjudicate upon. A court must have both jurisdiction and competence in order to be properly seized of a cause or matter. Whereas


Jurisdiction is a creature of statute and is the power conferred on a court by *statute or the Constitution, a court is competent when:*

(1) It is properly constituted with respect to the number and qualification of members.

(2) The subject matter of the action is within its jurisdiction and there is no feature in the case which prevents the court from exercising its jurisdiction (such as *limitation or lack of capacity of the parties).*

(3) The action is initiated in compliance with the rules of procedure and

(4) Any condition precedent to the exercise of its jurisdiction has been fulfilled."

- 13. The jurisdiction of the Registrar is spelt out in the Companies Act, Cap 106. With respect to company names, the jurisdiction of the Registrar does not include determining matters governed by other laws such as the Trademarks Act nor venturing into common law causes of action such as passing off. The Applicant cannot therefore bring a trademark infringement action or actions for passing off disguisedly as matters the Registrar of Companies should consider to exercise discretion under section $37$ (2) of the Companies Act. I therefore find this application not appropriate for the Registrar's exercise of discretion under section 37 $(2)$ of the Companies Act. - 14. I now proceed to examine the applicability of section 40 of the Companies Act. 40. Change of name

$(1)$ A company may by special resolution and with the approval of the registrar signified in writing change its name.

(2) Where, through inadvertence or otherwise, a company on its first registration or on its registration by a new name is registered by a name which, in the opinion of the registrar, is too similar to the name by which a company in existence is previously registered, the first-mentioned company may change its name with the consent of the registrar and, if the registrar so directs, shall change it within six weeks from the date of the direction or such longer period as the registrar may allow.

$(3)$ A company which defaults in complying with a direction under subsection(2) is liable to a fine of twenty-five currency points and to an additional fine of five currency points for each day on which the default continues.

(4) Where a company changes its name under this section, it shall, within fourteen days, give to the registrar notice of the change of name and the registrar shall enter the new name on the register in place of the former name, and shall issue to the company a certificate of change of name and notify the change of name in the Gazette and in a newspaper of wide circulation.

$(5)$ A change of name by a company under this section shall not affect any rights or obligations of the company or render defective any legal proceedings by or against the company, and any legal proceedings that might have been continued or commenced against it by its former name may be continued or commenced *against it by its new name."*

- 15. The relevant provision invoked by Counsel for the Applicant is subsection (2). It provides; "Where, through inadvertence or otherwise, a company on its first registration or on its registration by a new name is registered by a name which, in the opinion of the registrar, is too similar to the name by which a company in existence is previously registered, the first-mentioned company may change its name with the consent of the registrar and, shall change it within six weeks from the date of the direction or such longer period as the registrar may allow." From the reading of that provision, it is clear that it does not apply to the circumstances of this case. The provision applies only where the name of a later registered company is deemed similar to the name of an earlier registered company necessitating change of the name of the later company. This does not arise in this application. - 16. The applicant seeks a remedy of change of name, on grounds that the Respondent use of the word "Lion" in its name would infringe its trademarks and cause confusion in the market. Such claims are outside the purview of section 40 of the Companies Act. I also note that the applicant seeks a remedy to bar the Respondent from using the word "LION", in essence seeking an injunction. The Registrar has no jurisdiction to grant injunctive relief nor to declare that the Respondent's use of the word "Lion" in its name is likely to cause confusion with the Applicant's


trademarks. These claims should have been filed with the High Court which has unlimited jurisdiction including subject matter jurisdiction.

17. It is against that background that I find that the Registrar of Companies has no jurisdiction to hear and determine the complaint/application filed by the applicant nor to grant the prayers sought. The application is accordingly dismissed with no order as to costs.

I so Order.

Delivered by mail this 23^rd day of July 2024.

Muliisa Solomon **Registrar of Companies**