Nairobi Java House Ltd. v. Mandela Auto Spares Ltd. (Civil Appeal No 13 of 2015) [2016] UGCOMMC 12 (9 February 2016)
A recent decision by the Ugandan High Court affirms that evidence of use of a mark in one member state of the East African community could be relevant in a proceeding in another member state to establish that the mark has acquired distinctiveness through use.
Nairobi Java House Ltd. v. Mandela Auto Spares Ltd. (February 9, 2016), involved an appeal against a May 2015 decision of the registrar of trademarks refusing registration of the trademarks below in Class 43 filed by Nairobi Java House in August 2013:
The refusals followed an opposition by Mandela Auto Spares, the owner of the mark in Class 30 below filed in July 2009:
The refusals were based on the similarity of the marks.
The Uganda High Court set aside the registrar’s refusal to register the Nairobi Java House marks, finding no confusing similarity with the Mandela Auto Spares mark. It ruled that Nairobi Java House may register JAVA as part of its composite mark provided that a disclaimer of JAVA, a common descriptive word, is entered.
Notably, in reaching this decision, the court relied on Article 6 of the Paris Convention, Sections 9, 10, 44, and 45 of the Ugandan Trademarks Act 2010, and the Treaty for the Establishment of the East African Community (as amended on December 14, 2006 and August 20, 2007). It found that the Nairobi Java House marks had been registered in Kenya since May 2000, and noted that the length of time that the marks had been in use in Kenya is a relevant factor under Article 6(C)(1) of the Paris Convention. Under that Article, read together with Uganda’s Trademarks Act 2010, the registrar may not refuse to register the Nairobi Java House marks given their proven continuous use in Kenya, their country of origin. The court also found that the registrar’s refusal constituted a violation of the guaranteed freedoms under the Treaty for the Establishment of the East African Community, that provides for the free movement of goods, persons, labor, services, capital, information, and technology among the member states. It held that the registrar’s decision unjustifiably barred registration in Uganda of marks that had been earlier registered in Kenya.
It remains to be seen whether the Ugandan High Court’s liberal approach to applying the territoriality principle within regional economic blocs is followed by other East African Community member states.