Topic: Jurisdiction of Registrar of Companies in Trademark infringement claims
Date of Judgment: 23 July 2024
Forum: Registrar of Companies, Uganda Registration Services Bureau (URSB)
Case Number/Citation: Trademark Application 55973 of 2016 [2024] UGRSB 17
Before: Muliisa Solomon, Registrar of Companies
Summary Facts of the Case
Sanlam General Assurance Uganda Limited (the Applicant) filed a complaint against ICEA General Insurance Company (U) Limited (the respondent) alleging that the use of the word “Lion” in the respondent’s name infringed the applicant’s registered “LION” trademarks and was likely to cause confusion in the market.
The Applicant brought the complaint and sought remedies under sections 37(2) and 40(2) of the Companies Act, including an order for the respondent to change its name and essentially an injunction against the further use of the name.
Main Legal Issues
- Whether the Registrar of Companies has Jurisdiction to hear and determine matters concerning trademark infringement and passing off.
Decision of the Tribunal
The Registrar of Companies dismissed the application, ruling that the Registrar does not have jurisdiction to hear and determine issues of trademark infringement or passing off.
Such matters fall under the ambit of the Registrar of Trademarks via the Trademarks Act and the Courts of Judicature respectively.
The Registrar of Companies emphasized that jurisdiction is a creature of statute and cannot be assumed or conferred by the parties’ consent or the acquiescence of the tribunal.
The provisions of Section 37(2) and 40(2) of the Companies Act which relate to the Registrar of Companies’ discretion to order a company to change its name are restricted to situations where there is a misleading indication in the later company’s name and do not extend to trademark infringement or passing off claims such as the Applicant’s.
Further, the Registrar of Companies does not have jurisdiction to grant injunctive relief in matters of this nature.
Key Quote
“I do not think Section 37(2) is applicable in this context. This is because, before the Registrar can exercise discretion to order change of name, he or she must form an opinion that the name gives a misleading indication. In the context of this application, it would require the Registrar to determine whether the change of name constitutes infringement of the applicant’s trademarks or whether such use is passing off of the applicant’s goods. These matters are outside the jurisdiction of the Registrar of Companies. Issues of trademark infringement are governed by the Trademarks Act, Cap 225 and are outside the mandate of the Registrar of Companies. While issues of passing off based on common law are only determined by courts of Judicature.” – Muliisa Solomon, Registrar of Companies
Law Applied
- Companies Act (Sections 37 and 40): the power of the Registrar to require a company to change its name if it is misleading or too similar to another company’s name.
- Trademarks Act Cap 225: law governing issues of trademark infringement.
Counsel on Record
- For the Applicant: Engoru Mutebi & Co Advocates
- For the Respondent: MMAKS Advocates
Conclusion
This case demonstrates the limitations of the Registrar of Companies’ jurisdiction in company name matters touching trademark infringement and passing off.