Sorry Folks, No More Kamadol
Dec 10, 2003
HERE is the ruling of Rita Bbanga Bukenya, assistant registrar of trademarks, in the case of Kampala Pharmaceuticals versus SmithKline Beecham PLC, writes <b>Chibita wa Duallo</b>
These proceedings arose out of an application by Kampala Pharmaceutical Industries (1996) Limited (Applicant) for registration of the name KAMADOL. The respondent, SmithKline Beecham, opposed the registration on the grounds that the word ‘Kamadol’ is phonetically identical to their own word ‘Panadol’.
Counsel for the respondent, Ruth Masika, submitted that the word ‘Kamadol’ is visually and phonetically identical with the word ‘Panadol’. To support her argument, she quoted the case of ‘London overseas trading company Ltd’ versus Raleigh Cycle Co. Ltd, where it was held that the words ‘Lale’ and ‘Raleigh’, are indeed, the same in Uganda.
During the proceedings, I was confronted with the problem of comprehending whether counsel on either side meant to say the word ‘Panadol’ or ‘Kamadol’ when submitting on varying issues. I noted that at times counsel had to inquire whether the one submitting meant ‘Panadol’ or ‘Kamadol’. This occurred many times despite the fact that when written the two words begin with different alphabetical letters.
I agree with counsel for the applicant, Arthur Mukwatanise that the words Kama and Pana are differently sounding in our society. However, the proceedings before me deal with the words ‘Panadol’ and ‘Kamadol’, which gave the three of us a big problem to identify phonetically.
For that reason, I tend to agree with counsel for the respondent that the word ‘Kamadol’ is phonetically identical with the word ‘Panadol’, though the two words may visually appear to be different.
I will now tackle the issue of whether the two words if used as trademarks for a pharmaceutical product generically known as paracetamol by more than one proprietor are likely to confuse and deceive the public.
A trade mark means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under Section 40 of this Act.
Halsbury’s Laws of England provides the rules for comparison of word marks as follows: -
l The two words must be taken and judged both by their look and by their sound.
l The goods to which the marks are to be applied and the nature and kind of customer who is likely to buy these goods must be considered, and;
l The surrounding circumstances must be considered and also what is likely to happen, if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The first guiding rule has been dealt with. Section 14 of the Trade Marks Act stipulates that it shall not be lawful to register as a Trade Mark or part of a Trade Mark any matter the use of which would by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality or any scandalous design.
Concerning the burden of proof in applications for the registration of TradeMarks, the burden of proof is on the applicant to satisfy the registrar that the trade mark applied for is not likely to deceive or cause confusion.
Counsel for the applicant submitted that the product ‘Kamadol’ has been on the Ugandan market since 1993 and has not affected the product ‘Panadol’ and the respondent has never complained of it.
I agree with counsel for the respondent that ‘Kamadol’ so nearly resembles ‘Panadol’ that it should not be allowed to be registered as a trade mark in respect of a pain killer product, goods or description of goods, that is identical with a trade mark ‘Panadol belonging to a different proprietor and already on the register.
The two words, if allowed to be used as different trademarks, are bound to confuse the public that the two are one or belong to the same proprietor.
Considering the circumstances of the case, the applicant has not proved to the Registrar’s satisfaction that the application for ‘Kamadol’ as a trademark was done in good faith as required by the trademarks Act. Considering the relative low literacy rates in Uganda, it is hard to tell whether the public has been buying ‘Kamadol’ or ‘Panadol’ knowing one is the other. As a result the respondent’s goodwill for their product may have been compromised. Each party will bear its own costs.
Ends
Counsel for the respondent, Ruth Masika, submitted that the word ‘Kamadol’ is visually and phonetically identical with the word ‘Panadol’. To support her argument, she quoted the case of ‘London overseas trading company Ltd’ versus Raleigh Cycle Co. Ltd, where it was held that the words ‘Lale’ and ‘Raleigh’, are indeed, the same in Uganda.
During the proceedings, I was confronted with the problem of comprehending whether counsel on either side meant to say the word ‘Panadol’ or ‘Kamadol’ when submitting on varying issues. I noted that at times counsel had to inquire whether the one submitting meant ‘Panadol’ or ‘Kamadol’. This occurred many times despite the fact that when written the two words begin with different alphabetical letters.
I agree with counsel for the applicant, Arthur Mukwatanise that the words Kama and Pana are differently sounding in our society. However, the proceedings before me deal with the words ‘Panadol’ and ‘Kamadol’, which gave the three of us a big problem to identify phonetically.
For that reason, I tend to agree with counsel for the respondent that the word ‘Kamadol’ is phonetically identical with the word ‘Panadol’, though the two words may visually appear to be different.
I will now tackle the issue of whether the two words if used as trademarks for a pharmaceutical product generically known as paracetamol by more than one proprietor are likely to confuse and deceive the public.
A trade mark means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under Section 40 of this Act.
Halsbury’s Laws of England provides the rules for comparison of word marks as follows: -
l The two words must be taken and judged both by their look and by their sound.
l The goods to which the marks are to be applied and the nature and kind of customer who is likely to buy these goods must be considered, and;
l The surrounding circumstances must be considered and also what is likely to happen, if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The first guiding rule has been dealt with. Section 14 of the Trade Marks Act stipulates that it shall not be lawful to register as a Trade Mark or part of a Trade Mark any matter the use of which would by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality or any scandalous design.
Concerning the burden of proof in applications for the registration of TradeMarks, the burden of proof is on the applicant to satisfy the registrar that the trade mark applied for is not likely to deceive or cause confusion.
Counsel for the applicant submitted that the product ‘Kamadol’ has been on the Ugandan market since 1993 and has not affected the product ‘Panadol’ and the respondent has never complained of it.
I agree with counsel for the respondent that ‘Kamadol’ so nearly resembles ‘Panadol’ that it should not be allowed to be registered as a trade mark in respect of a pain killer product, goods or description of goods, that is identical with a trade mark ‘Panadol belonging to a different proprietor and already on the register.
The two words, if allowed to be used as different trademarks, are bound to confuse the public that the two are one or belong to the same proprietor.
Considering the circumstances of the case, the applicant has not proved to the Registrar’s satisfaction that the application for ‘Kamadol’ as a trademark was done in good faith as required by the trademarks Act. Considering the relative low literacy rates in Uganda, it is hard to tell whether the public has been buying ‘Kamadol’ or ‘Panadol’ knowing one is the other. As a result the respondent’s goodwill for their product may have been compromised. Each party will bear its own costs.
Ends