E.J

25 GROUNDS OF OPPOSITION, BUT NOT ONE IN THE RIGHT FORUM! KNOW THE RULES: THE REGISTRAR OF TRADEMARKS CANNOT DETERMINE EVERY DISPUTE CONNECTED TO A TRADEMARK. In Isima Ssewankambo t/a Kangar Shoe Care v Kangaroo Brands Limited (Kenya), Trademark Opposition No. UG/T/2023/081536, a ruling delivered on 20 August 2026, the Assistant Registrar of Trademarks, Kukunda Lynette Africa, considered the boundaries of the Registrar's jurisdiction. The background: Kangaroo Brands Limited applied to register SPARKLE SHINE in Class 3 for shoe polish and shoe cream. Isima Ssewankambo, the registered proprietor of the KANGAROO trademark in Classes 3 and 35, opposed the application. The Opponent argued that although SPARKLE SHINE was distinct from KANGAROO, the Applicant's packaging, particularly the words "Made in Kenya by Kangaroo Brands Limited", was likely to confuse consumers. He also raised concerns about individuals previously restrained from dealing in infringing shoe cream. The Applicant challenged the jurisdiction of the Registrar, arguing that the complaints essentially concerned passing off and unlawful competition. WHAT DID THE REGISTRAR DECIDE? 1. Trademark opposition is not a passing-off action. The Registrar observed that the Opponent did not allege that SPARKLE SHINE resembled KANGAROO. The alleged confusion arose from the Applicant's corporate name and product packaging, rather than the mark sought to be registered. The Registrar held that opposition proceedings concern the registrability of a trademark, including distinctiveness, similarity and likelihood of deception. They cannot be used to determine standalone disputes about a trader's conduct in the marketplace. Reliance was placed on East African Roofing Systems Ltd v Metal Wood Industries Ltd and Megha Industries U Ltd v Royal Mabaati Uganda Ltd. 2. Section 35 preserves the common law action of passing off. The Registrar explained that passing off protects commercial goodwill through the classical trinity: Goodwill: Established reputation in the relevant goods or services. Misrepresentation: Conduct likely to deceive consumers into believing that another's goods are those of, or associated with, the claimant. Damage: Actual or likely damage to that goodwill. The decision relied on Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491, affirming that distinctive packaging and product get-up may be protected through passing off even without a registered trademark. 3. A trader may use its corporate name, but not as a licence to pass off. Relying on Section 24(a) of the Trademarks Act, the Registrar observed that a trader is entitled to use its own name in the course of trade. Accordingly, the appearance of "Kangaroo Brands Limited" on the packaging was not, by itself, a ground for refusing registration. However, whether the overall presentation amounts to passing off remains a separate question for the competent court. 4. An unserved statutory declaration cannot be relied upon. The Applicant also challenged reliance on a statutory declaration in rejoinder which had allegedly never been served. Applying Regulation 33 of the Trademark Regulations, 2023, the Registrar found no proof of service and disregarded the declaration. This reinforces a fundamental principle of fair hearing: a party cannot be expected to answer evidence it has never been served with. THE OUTCOME The SPARKLE SHINE application was permitted to proceed to registration upon application and payment of the requisite fees. MY TAKE: This ruling draws an important distinction between challenging the registrability of a trademark and challenging how a trader presents its products in the marketplace. A party may have a legitimate grievance, compelling evidence and even 25 grounds of opposition. But none of that answers the most fundamental question: DOES THE FORUM HAVE JURISDICTION TO DETERMINE THE DISPUTE? #KNOWTHERULES