ASSESSMENT OF LIKELIHOOD OF CONFUSION IN TRADEMARK OPPOSITION PROCEEDINGS IN UGANDA

By Ninsiima Irene

An opposition to the registration of a trademark grounded on existence of a similar mark will be upheld by the Registrar of Trademarks or the court, where the opponent establishes a likelihood of confusion to an average consumer in the territory where the earlier mark is protected. Likelihood of confusion is the possibility that an average consumer will be unable to distinguish goods or services bearing the earlier mark from goods or services bearing the contested mark from a different origin because of identity or similarity of the marks and identity or similarity of the goods or services covered by the mark.

The Trademarks Act 2010[1] prohibits registration of identical or resembling trademarks, and confers the exclusive right to the use of a trademark by the registered owner.[2] The protection given to a registered owner of a trademark is based on the essential function of a trademark which is not to describe the goods or services but rather to indicate their source or origin. According to Kerly’s Law of Trademarks and Trade names;[3] the essential function of a trademark is to guarantee to the consumer or the ultimate user of the origin of the goods or services by enabling him without any possibility of confusion to distinguish that product   from products which have another origin. Thus the law prohibits registration of identical or resembling trademarks, except as otherwise provided.

The duty of the Judge/court or the registrar; as has been emphasized by courts overtime, is to decide, upon seeing the marks, whether the opponent’s mark  is identical or nearly resemble the one complained of, as to be likely to deceive or cause confusion in the minds of an average consumer. The court must look at the marks and compare so as to arrive at its own conclusion on the similarity of the marks, see Tuskys (U) Ltd V Tusker Mattresses (U) Ltd;[4] Aglo Fabrics (Bolton) Ltd &Anor V. African Queen Ltd &Anor.[5]

Lady Justice Hellen Obura in Tuskys (U) Ltd V Tusker Mattresses (U) Ltd (supra) at page 13 reiterated the position state in the case of Schweppes Ltd V Gibbens;[6] as per Warrington J, whose judgment was approved by majority of the Court of Appeal and by the House of Lords. Warrington J cited with approval a quotation from Kerly’s Law of Trademarks [7] to the effect that:

“It seems to me that each of these cases must be looked at by itself; and the judge looking at the label or get up or the device, whatever it may be that is complained at…must decide for himself whether the article complained of is calculated to deceive or not”

All these decisions emphasize that the court must look at the marks and compare so as to arrive at its own conclusion on the similarity of the marks.

According to Kerly’s Law of Trademarks and Trade names,[8]  a sign is identical with the registered mark where it reproduces; without any modification or addition, all the elements constituting the mark or where viewed as a whole, it contains differences so insignificant they may go unnoticed by an average consumer. For marks to be considered identical, they must be so close that one may be considered a counterfeit of another. If the marks are visually and aurally dissimilar or have substantial or material variations, then they cannot be considered identical.  There can only be identity if there is both aural and visual identity.

Once the contested mark is found not to be identical, the issue to determine is whether it nearly resembles the registered mark. According to Kerly’s Law of Trademarks and Trade names;[9] in considering whether a trademark nearly resembles another so as to create a likelihood of confusion, court must examine the trademarks globally considering all its visual, aural/phonetic and conceptual aspects.

It is trite that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole.

In some circumstances, the assessment of the similarity may be made solely on the basis of the dominant element of a composite mark. However, that concerns only exceptional situations, and it is only if all the other components of the mark are negligible in the overall impression conveyed by it that the assessment of the similarity can be carried out solely on the basis of the dominant element.[10]

Visual comparison takes into account various aspects which an average consumer faced with the product can perceive among them similarity of figures, words, colour effect, colour pattern, dimensions etc.

Aural or phonetic comparison assesses similarity in the pronunciation or intonations of the marks. This is only possible where the mark is purely a word mark or a word or words are a component of the mark.

A conceptual comparison on the other hand assesses whether a common concept can be immediately perceived in the signs, the image or recollection of the mark that is left in the mind of the consumer. Marks are conceptually similar where the public perceives the two marks as having a similar sematic content. Some differences in the depiction of the representation of common elements and symbols may suffice to exclude likelihood of confusion even if the underlying concept is not altered.

Therefore where substantial or material variations are identified in the marks, their co existence on the register and use would not create any likelihood of confusion to an average consumer. In the case of Nude Brands Ltd V Stella McCartney Ltd & Ors;[11] Floyd J held that “Stellanude” was not identical to “Nude” as the additions would be noticed by an average consumer.  In the case of British Sugar,[12] court made an interesting observation that no one but a crossword fanatic, for instance, would say that “treat” is present in “theater atmosphere”. Similarly in the Ugandan court decision in Tuskys (U) Ltd V Tusker Mattresses (U) Ltd (supra) Justice Hellen Obura of the High Court (at page 14 para 1) held that the trade mark “TUSKYS” could co-exist with “Time to go TUSKYS, your friendly Supermarket” trademark; stating that there was no doubt that the word TUSKYS was prominent in both marks but placed side the additional words “Your friendly supermarket”  would distinguish the two marks and a reasonable consumer could see the additions on the mark an know that the other is a supermarket. According to Kerly’s Law of Trademarks and Trade names,[13] for purposes of global assessment and appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect.