Furthermore Counsel submitted that under the Judicature Act Cap 13 laws of Uganda, in so far
as the written law does not extend or apply, English common law and procedure was applicable.
He lamented the dearth of authorities on the issue in Uganda. He submitted that the court should
assess similarity between the registered mark and the likelihood of confusion using the tests set
up by Kitchin LJ of the Court of Appeal of England and Wales in the Specsavers International
Health Care Ltd versus Asda Stores Ltd [2012] EWCA Civ 24 at paragraphs 51 and 52. It was
held that the likelihood of confusion must be appreciated globally, taking account all relevant
factors and the matter must be judged through the eyes of the average consumer of the goods and
services in question, who is deemed to be reasonably well-informed and reasonably circumspect
and observant. There is a greater likelihood of confusion where the earlier Mark has a highly
distinctive character either per se because of the use that has been made of it.
The Assistant Registrar correctly set out the test in paragraph 34 of the decision but failed to
properly apply the test to the facts of the case before him. Secondly the Assistant Registrar erred
in taking a heavily restrictive approach and failed to recognise that the principles only constitute
a convenient summary. He erred in failing to have regard in detail to the particular body of case
law which applied. There were material errors of principles in his assessment of the legal issues
and evidence and ultimately arriving at the erroneous conclusion to refuse registration of the
Appellant's trademarks.
Counsel submitted that the Assistant Registrar failed to properly compare the respective marks
aurally at all and conceptually as a whole. The error is in treating the Appellant‘s trademarks and
the Respondent‘s trademarks as mere word marks. As a result he erroneously arrived at the
conclusion that the Appellant‘s trademarks and the Respondent‘s trademarks are confusingly
similar. Counsel went ahead to compare the competing marks which formed the subject matter of
opposition proceedings. He submitted that section 25 (2) of the Trademarks Act provides that a
trademark relating to services to be registered in respect of services or description of services
that is identical with or nearly resemble the trademark belonging to a defendant, and already on
the register in respect of the same services and same description of services. Section 25 (2) of the
Ugandan Trademarks Act is similar to section 5 (2) (b) of the Trademarks Act 1994 of the
United Kingdom. This section provides that a trademark shall not be registered where it is
similar to an earlier trademark for services identical with or similar to those for which the earlier