Liberty (ICD) Limited v Liberty Group Limited (Trademark Application 59775 of 2017) [2020] UGRSB 1 (12 March 2020)


## **UGANDA REGISTRATIONS SERVICES BUREAU**

## **THE TRADEMARKS ACT, 2010**

# IN THE MATTER OF TRADEMARK APPLICATION NO. 59775 "LIBERTY (ICD)" LTD IN CLASS 35 BY LIBERTY (ICD) LIMITED

### AND

## IN THE MATTER OF AN OPPOSTION OF REGISTRATION BY LIBERTY GROUP LIMITED

### **BEFORE: NYANGOMA MARIA, ASST. REGISTRAR TRADEMARKS**

- 1. Liberty (ICD) limited is a company fully registered and incorporated under the companies Act of Uganda on 12<sup>th</sup> October 2009 engaged in trade business liberty (ICD) limited. - 2. On the 14<sup>th</sup> September 2017, LIBERTY (ICD) LTD (herein the applicant) applied for the registration in Part A of the trademark logo consisting of a mark consisting of a graphical representation of the capital "L", a train enclosed in an orange globe consisting of the words "LIBERTY (ICD) **LTD**" below in class 35. The application was accepted and subsequently published in the gazette on the 20<sup>th</sup> October 2017. - 3. On 19<sup>th</sup> December 2017, liberty group limited (herein the opponent) filed a notice of opposition to the above application on grounds contained in the statement supporting the notice. - 4. The applicant is in the business of ICD-inland container depot, it's a dry port equipped for handling and temporary storage of containerized cargo as

well as empties from all over the world whereas the opponent is in the business of insurance.

- 5. The opponent has registered a word mark Trademark No. 50303 LIBERTY under class 35 whereas the applicant has made an application for registration of its logo and device under class 35 which comprises of the English alphabetical letter "L" and a cargo train in an orange globe hence the opposition. - 6. On 05/05/2018, the respondent filed their counterstatement to the opposition. - 7. Both parties submitted their evidence via statutory declaration sworn by Ameer Karmali on the 20/06/2018 for the applicant and Joe Almeida on the $6/09/2018$ for the opponent.

#### **HEARING**

- 8. The hearing commenced on $08/10/2019$ . - 9. It was agreed both parties would file written submissions.

#### **ISSUES RAISED**

- 1. Whether there's any likelihood of confusion between LIBERTY and **LIBERTY** (ICD) LTD marks as applied for? - 2. Whether trademark Application NO, 2017/59775 offends sections 9,23 and 25 of the Trademarks Act? - 3. What remedies are available to the parties?

#### **RESOLUTION OF ISSUES**

### **Issue one**

Whether there's likelihood of confusion between Liberty and Liberty (ICD) LTD marks as applied for?

The term likelihood of confusion is provided for under Section 25 of the Trademarks Act, 2010. This section clearly stipulates that subject to section 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 of that description

The concept of likelihood of confusion is one of the central aspects in determining registrability. In the cases of Anglo Fabrics (Bolton) Ltd & Anor v. African Queen Ltd & Anor CS-632/2006, Canon Kabushiki Kaisha v. Metro Goldwyn-Mayer Inc [1999] RPC 117, it was held that when dealing with the likelihood of confusion the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; nevertheless, the overall impression conveyed to the public by a composite trademark may, in certain circumstances be dominated by one or more of its components.

The court of justice of the European union in the Office of Harmonization in the Internal Market (OHIM) case $C - 334/05 - P$ decided that in assessing two competing marks and the incident of likelihood of confusion, the Applicant must carry out a global assessment of the likelihood of confusion of the marks in issue. He or she does this in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component or a composite trademark and comparing it with another one. The comparison must be made by examining each of the marks in question as a whole.

In the case of INTERNATIONAL HEALTH CARE LTD V ASDA STORES LTD (2012) EWCA Kitchin LJ stated that likelihood of confusion must be appreciated globally, taking account all relevant facts and must be judged through the eyes of average consumer of goods and services in question who is deemed to be reasonably well informed and observant.

Looking at the both marks the opponent has registered a word mark **LIBERTY** in class 35. It is stated in the opponent's statement of grounds of opposition paragraph 3 that their main service is in the field of insurance whereas the applicants mark is the letter a " $L$ " with a picture of a cargo train in an orange globe with the words **LIBERTY** (ICD)LTD written below in the same class 35. We note that the applicant's nature of business is, international business of cargo handling of exports and imports.


**LIBERTY**

**Applicants mark**

**Opponents mark**

It is true that both the Applicant and the Opponent are dealing in services from the same class 35 however, the applicant is specifically dealing in business of cargo handling of exports and imports while the opponent is dealing in insurance. When we look at the users of the respective goods, they are in a totally different scope. This is because the Opponents' products are of such a nature that the class of customers are in line of insurance and the applicants will be in line of importation and exportation of goods.

Looking at the question of similarity of goods is one that must be determined independently before determining whether there is a probability of confusion. This issue can be guided by the parameters stated in BRITISH SUGAR VERSUS JAMES ROBERTSON [1996] RPC 281 that in the question concerning similarity of the goods and services court must consider

- the respective uses of the respective goods or services i) - the respective users of the respective goods or services ii) - the physical nature of the goods/service iii)

the respective trade channels through which the goods or services reach $iv)$ the market

the extent to which the respective goods or services are competitive $v)$

The applicants mark as filed on our register was represented as the letter a " $L$ " with a picture of a cargo train in an orange globe with the words **LIBERTY** (ICD) LTD written below. The applicant's submission did not fully state the mark as had been filed on our register therefore, the decision has taken into account the mark as had been filed. It is my opinion that the two conflicting trademarks will not be easily confused by the average consumer because the services rendered by each is different and the dominant aspects of both marks are not similar as one looks at the mark as a whole.

In light of the above, the marks visually do not resemble, the graphical designs are different, the colour schemes of both marks are different and the general representation of the marks is contrasting and distinctive. The applicants trademark consists of the registered name and a distinctive graphical design; the words LIBERTY (ICD) LTD together with a logo design consisting of the letter "L" and a drawing of a train that are both contained in a globe like device. Thus, when you compare the mark of the opponent which consists of only the words "LIBERTY" the marks are not the same. Therefore, the applicants offending mark and the mark of the opponent are different by their nature, method of use and distribution channels and are not in competition with or complementary to each other. They are dissimilar.

### Issue two

# Whether trademark Application No. 2017/59775 offends sections 9, 23 and 25 of the Trademarks Act?

#### **Section 9** of the **Trademarks Act** states that;

In order for a trademark other than a certification mark to be registered $(1)$ in Part A of the register, the trademark shall contain or consist of at least one of the following essential particulars—

the name of a company, individual or firm, represented in a special or $(a)$ particular manner;

the signature of the applicant for registration or of some predecessor in $(b)$ his or her business;

an invented word or invented words; $(c)$

a word or words having no direct reference to the character or quality of $(d)$ the goods or services, and not being according to its ordinary signification, a geographical name or a surname; or

any other distinctive mark, but a name, signature or word or words, $(e)$ other than words within the descriptions in paragraphs (a), (b), (c) and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.

(2) For the purposes of this section, "distinctive" means-

(a) in the case of a trademark relating to goods, adapted in relation to the goods in respect of which the trademark is registered or proposed to be registered, to distinguish goods with which the owner of the trademark is or may be connected, in the course of trade, from goods in the case of which no connection subsists; or

(b) in the case of a trademark relating to services

#### Section 23 (1) of the Trademarks Act states;

The registrar shall not register as a trademark or part of a trademark any matter the use of which would be likely to deceive or would be contrary to law, morality or any scandalous design.

#### **Section 25 (1)** of the Trademarks Act states;

Subject to section 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.

The Advanced Oxford Dictionary defines the word "LIBERTY" to mean "freedom to live as you choose without too many restrictions from government or authority".

It is true that **LIBERTY** is not an invented word as it already exists in the dictionary however the said mark can be classified under Section 9 (1) of the Trademarks Act as was stated by the Opponents. The said mark further has no direct reference to the character or quality of the goods in class 35 hence it can also fall under Section $9(1)(d)$ of the Trademarks Act to be able to qualify for registration under the Trademarks act. The question to ask therefore, is whether the said mark is capable of distinguishing a service with which the owner of the trademark is or maybe connected, with a service where no connection exists.

As already stated in Issue one the two marks in issue when taken as a whole cannot be said to be similar as to cause confusion as to the origin of the service provided.

The law allows a trademark to consist of the company name as stated above in Section 9 $(1)(a)$ of the Trademarks Act above. The applicant's trademark is noted to be represented in a special and particular manner making it distinguishable; the applicants mark is that letter a "L" with a picture of a cargo train in an orange globe with the name of the company LIBERTY (ICD) LTD written below. In as much as the opponent's word mark "LIBERTY" is distinctive in class 35 one has to look at the mark as whole as was decided in the case of Office of Harmonization in the Internal Market (OHIM) case $C - 334/05$ – Thus in this particular case the opponent's marks has the dominating element of the word LIBERTY while the applicant's mark has a device of the letter "L" with a train in the globe and their company name LIBERTY (ICD) Ltd which when placed side by side differ and is capable of being distinguished from the opponents mark.

In light of the above, Trademark No. 2017/59775 does not offend Section 9, 23 and 25 of the Trademarks Act.

#### **Issue three**

### What remedies are available to the Parties?

- The Applicant is entitled to proceed to register their mark under the $1.$ Trademarks Act and amend the application to specifically state that their services will be limited to handling international business of exports and imports. - The opposition is here by dismissed. $2.$ - $3.$ The parties bear their own costs.

DATED this .1. day of ................................... 2020. **Asst. Registrar of Trademarks**