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Wednesday, 10 August 2016

Exclusive Rights to Use Trademark as a Whole

EXCLUSIVE RIGHTS TO USE TRADEMARK AS A WHOLE AND NOT IN PARTS

It is a well established principle in trademarks law that the exclusive right to use a trademark applies to its use as a whole and not in parts. Many a times a trademark can be a composite trademark having various elements in it, and when the trademark is registered, the protection is provided to the mark as a whole and not in parts.

The principle was recently reinstated by the commercial court division of the high court of Uganda in the case of Tuskys (U) Limited Versus Tusker Mattresses Uganda Limited. Tuskys (U) Ltd, registered a trademark “TUSKYS” in respect of goods in Class 18. On the other hand, Tusker Mattresses Ltd a Kenyan registered holding company of Tusker mattresses (U) Limited registered a trademark in Class 16 in the name and style of: “Time To Go TUSKYS Your Friendly Supermarket”. Tusker Mattresses Uganda Limited which was assigned the trademark runs retail chain supermarkets in Kampala under the said trademark. Tuskys (U) Limited brought the suit alleging that its trademark was being infringed by the defendant who was operating its supermarkets under the name “TUSKYS”. It sought for a permanent injunction restraining the defendant from any further use of its registered trademark among other reliefs.

While agreeing with Tuskys (U) Limited, court stated that there was no doubt that the word “TUSKYS” which is the plaintiff’s mark also stands out in the mark used by the defendant. If the two marks are put side by side as demonstrated below the words “Your Friendly Supermarket” in the mark used by the defendant would distinguish the marks because one would know that that of the defendant is a supermarket as the mark suggests. That if Tusker Mattresses (U) Limited used the trademark assigned to it without leaving out the words “Time To Go Your Friendly Supermarket” it would not cause any likelihood of confusion. The defendant’s abandonment of the mark assigned to it and adoption and use of the mark “TUSKYS” singularly made it identical to the plaintiff’s mark. Tusker Mattresses (U) Limited was ordered to revert back to the use of its assigned trademark “Time To Go TUSKYS Your Friendly Supermarket”.

Court reiterated the concept of considering trademarks as a whole. The proprietor gets exclusive right to the use the trademark as a whole. In the same way, the proprietor cannot preclude others from using any part of the trademark independently or in a combination of difference words altogether. To claim rights over any part of such trademark, the proprietor must apply for registration of such part as separate trademark.