THE REPUBLIC OF UGANDA,

IN THE HIGH COURT OF UGANDA AT KAMPALA

(COMMERCIAL DIVISION)

MISCELLANEOUS APPLICATION NO 580 OF 2015

(ARISING FROM CIVIL APPEAL NO. 13 OF 2015)

NAIROBI JAVA HOUSE LTD}................................................................APPLICANT

VS

MANDELA AUTO SPARES LTD}........................................................RESPONDENT

BEFORE HON. MR. JUSTICE CHRISTOPHER MADRAMA IZAMA

RULING

The Applicant's application is for leave to amend the notice of motion and the grounds in High Court Civil Appeal Number 13 of 2015 between the parties.

The Applicant is represented by Counsel James Mukasa Sebugenyi and appeared with Counsel Patson Arinaitwe. The Respondent is represented by Counsel Alex Rezida.

At the hearing of the application an issue arose as to the proper rules applicable to an application for amendment of the grounds of appeal. The Applicant proceeded under Order 6 rule 19 and 31 of the Civil Procedure Rules which permits an application by chamber summons for amendment of pleadings. It provides that:

"The court may, at any stage of the proceedings, allow either party to alter or amend his or her pleadings in such manner and on such terms as may be just and all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties."

The crux of the matter is that what is before the court is an appeal brought under regulation 90 of the Trademarks Regulations 2012 as well as section 66 of the Trademarks Act which prescribes an appeal by notice of motion.

Section 66 of the Trademarks Act 2010 gives powers of the court on appeal. It provides inter alia under section 66 (c) that the court may make such other order as it may consider. Secondly section 67 provides that the Chief Justice may in consultation with the Attorney General make rules as to the practice and procedure to be observed in respect of any jurisdiction which under the Act is exercisable by the High Court and also in respect of any appeals from the exercise of that jurisdiction. It further provides that the rules made under this section may in the case of the High Court, the Court of Appeal and the Supreme Court to be applied to the proceedings are the rules of practice and procedure applicable to civil proceedings in the High Court, the Court of Appeal or the Supreme Court as the case may be, subject to such modifications as may be specified in the rules.

Section 99 (2) of the Trademarks Act 2010 deals with the repeal and savings of the Trademarks Act Cap 217 laws of Uganda. It provides as follows:

“99. Repeal and savings.

(1) The Trademarks Act, and Chapter 37 of the Penal Code Act, Cap. 120 are hereby repealed.

(2) Nothing in this Act shall affect an order, rule, regulation or requirement made, table of fees or certificate issued, notice, decision, determination, direction or approval given, application made or thing done under the Trademarks Act repealed by this Act; and every order, rule, regulation, requirement, table of fees, certificate, notice, decision, determination, direction, approval, application or thing shall, if in force at the commencement of this Act, continue in force and shall, so far as it could have been made, issued, given or done under this Act, have effect as if made, issued, given or done under the corresponding provision of this Act.”

Subsection 2 clearly saves any rule or regulation made under the repealed Trademarks Act cap 217.

The regulations made under the Trademarks Act Cap 217 (repealed) namely the Trademarks Rules S.I. 217 - 1 did not prescribe any rules of procedure. Regulation 115 provided for appeals to the court. It provided that:

"When any person intends to appeal to the court, the appeal shall be made by motion in the usual way, and no such appeal shall be entertained unless it is of the motion is given within 60 days from the date of the decision appealed against or within such further time as the registrar shall allow."

The Respondents Counsel submitted that the Trademarks Regulations 2012 are inapplicable to the Applicant’s application. However regulation 90 of the Trademarks Regulations 2012 is couched in the same terms as the previous rules and provides as follows:

"90. Appeals to the court.

Where a person intends to appeal to court, the appeal shall be made by motion in the usual way, and no such appeal shall be entertained unless notice of the motion is given within sixty days from the date of the decision appealed against or within such further time as the registrar shall allow."

The rules thus far only prescribe the mode of commencement of an appeal from the decision of the registrar of trademarks to the High Court. It does not prescribe the procedure for conducting the appeal after it has been lodged by notice of motion.

Finally section 67 (2) of the Trademarks Act 2010 clearly provides that the rules made under the section may apply the rules of practice and procedure applicable to civil proceedings in the High Court, subject to the modifications as may be specified in the rules. The Respondent’s Counsel submitted that no rules had been made for appeals by the Chief Justice in consultation with the Attorney General as envisaged. The only rules that have been made were made by the Minister.

Notwithstanding the submissions, it is the Trademarks Act 2010 which applies the rules of procedure applicable to the High Court subject to the modifications to be introduced by the rules made by the Chief Justice in consultation with the Attorney General. Notwithstanding that such rules have not been made, it is Parliament which prescribes the application of the rules applicable to civil proceedings. In the premises section 67 (2) applies the rules of practice and procedure applicable to civil proceedings in the High Court to appeals from a decision of the registrar of trademarks.

Though the Applicant cited section 66 of the Trademarks Act 2010, the provision deals with powers of the court on appeal and not procedure and therefore deals with the jurisdiction of the court to make the orders mentioned under that section. Section 66 (c) further gives the court wide powers to make such other order as it deems fit in addition the confirming the decision of the registrar; setting aside or varying the decision of the registrar or referring the decision of the registrar with such directions as the court may think fit. The question is whether certain jurisdiction extends to the power to amend pleadings.

Turning to the Applicant's application for leave to amend the pleadings, I do not agree that Order 6 rule 19 of the Civil Procedure Rules which applies to pleadings in ordinary suits is applicable to an application for amendment of the memorandum of appeal as contained in the grounds of the notice of motion. The procedure in respect of appeals in the High Court is found under order 43 of the Civil Procedure Rules. The title of the Order is: "Appeals to the High Court". In that Order, there are specific provisions that deal with the grounds that may be taken on appeal. Though the grounds sought to be amended in the Applicants notice of motion commencing the appeal are contained in the notice of motion, order 43 rule 2 of the Civil Procedure Rules is applicable.

Order 43 rule 2 of the Civil Procedure Rules provides as follows:

Grounds which may be taken in appeal.

The Appellant shall not, except by leave of the court, urge , or be heard in support of any ground of objection not set forth in the memorandum of appeal; but the High Court in deciding the appeal shall not be confined to the grounds of objection set forth in the memorandum of appeal or taken by leave of the court under this rule; except that the High Court shall not rest its decision on any other ground unless the party who may be affected by the decision has had a sufficient opportunity of contesting the case on that ground.”

The amendments sought under Order 6 rule 19 of the Civil Procedure Rules deal with the pleadings which act as a plan either for the plaintiff or a defence for the defendant. Evidence would be adduced in accordance with the plan and the submissions made based on the plan reflected or disclosed in the pleadings. Amendments to pleadings give notice to the other side of what the case of the plaintiff is or what the defence is. Unless there is a point of law or an admission by any of the parties such as would entitle them to judgement, evidence is supposed to be adduced in support of the claim in the plaint or the defence before final submissions. Pleadings therefore deal with the case of the plaintiff which is going to be presented in court as well as the defence of the defendant which would be advanced at the hearing.

In appeals, the court does not deal with the case that is to be presented but deals with the grounds of objection to a decision which has already been made. It relies on the record of proceedings and materials used to arrive at the decision in considering the grounds of objection. Specifically Order 43 rule 1 of the Civil Procedure Rules provides that the memorandum shall set forth concisely and under distinct heads, the grounds of objection to the decree appealed from without any argument or narrative and the grounds shall be numbered consecutively. Of course Order 43 rule 1 (2) of the CPR deals with appeals to the High Court from a lower court. It specifically prescribes that the appeal shall be commenced by a memorandum of appeal signed by the Appellant or the advocate. However under the Trademarks Act there is a prescribed method of commencement of an appeal. It is by notice of motion. It provides that the appeal shall be made by motion in the usual way. In my understanding the expression "in the usual way" means in the manner provided for under the Civil Procedure Rules. Notices of motion are provided for under Order 52 of the Civil Procedure Rules. Order 52 rule 3 provides for the contents of the notice of motion and stipulates that every notice of motion shall state in general terms the grounds of the application and where any motion is grounded on evidence by affidavit, a copy of any affidavit intended to be used shall be served with the notice of motion. In other words a notice of motion need not be supported by any affidavit evidence. It is the practice that the affidavit evidence would inform the court and the opposite Counsel of what transpired in the proceedings before the Registrar of Trademarks. Otherwise the court would look at all the proceedings and materials which are relevant in the decision appealed from. The grounds are stated in the notice of motion.

Read together with Order 43, the grounds must specify the grounds of objection to the decision. The affidavit in support indicates that the registrar made a ruling on the 21st of May 2015 and the Applicant filed the appeal on 4 June 2015 within the period stipulated of 60 days.

Grounds of objection challenge the decision of the registrar. For that matter another ground of objection cannot be entertained without the leave of court obtained as stipulated under Order 43 rule 2 of the Civil Procedure Rules. It also follows that the correct application would be an application to argue other grounds of appeal not contained in the grounds of objection are reflected in the notice of motion. In this case however the Applicant claims that he does not intend to argue other grounds of appeal but have condensed the existing grounds consisting of nine grounds into three grounds. The Respondents Counsel on the other hand argued that there are new grounds which are being introduced by the proposed amendment.

Before considering the merits of the submissions I have reviewed the few authorities in light of my ruling above. The case of Jashby Patel vs. B.D. Joshi East African Court of Appeal in Civil Appeal Number 39 of 1951 deals with the principles for amendment of plaints and is distinguishable. The case of Eastern Bakery versus Castelino [1958] 1 EA 461 also deals with applications for leave to amend before trials and principles upon which amendments to pleadings should be allowed. As I have noted above pleadings do not necessarily deal with the grounds of objection to a pre-existing decision and record of proceedings. I have further considered the case of Muddu Awulira Enterprises Ltd and 2 Others vs. Stanbic Bank U Ltd HCMA 528 of 2010. It also dealt with amendment of pleadings before trial. The case of Mulowooza and Brothers Ltd versus M Shah and Company Civil Appeal No. 26 of 2010 decided by the Supreme Court dealt with an appeal from a ruling in an application for leave to amend the plaint before trial and is also distinguishable. The case of Gaso Transport Services (Bus) Ltd versus Obene [1990 – 1994] EA also deals with amendments before trial. In fact it was held by the Supreme Court that an application for leave to amend pleadings ought to be made promptly at the earliest stage in litigation. None of the authorities are on amendments of grounds of objection in an appeal.

My conclusion is that where the court is dealing with pleadings, it also subsequently will frame issues raised on the pleadings under Order 15 of the Civil Procedure Rules. On the other hand where there are grounds of objection, the issues arise from the grounds which are framed from the ruling or decision of the tribunal or lower court. It follows that the rule under Order 43 rule 2 of the Civil Procedure Rules not to permit an Appellant to argue another ground of appeal is relevant. The Respondent has a right of cross appeal. That notwithstanding its ground of objection raises issues against the decision for consideration of the Appellate Court. Unless leave is sought and granted to argue another ground of appeal, an amendment to the grounds of appeal can be made to make the ground clear or more specific without changing the ground of objection in substance. The power of the court to amend can be derived from the inherent powers of the court under section 98 of the Civil Procedure Act to make such orders as may be necessary for the ends of justice. I have further considered the general power to amend under section 100 of the Civil Procedure Act. The power seems to deal with amendments of defects or errors in any proceedings in a suit. I would not be bold to apply this general provision to amendments of grounds of objection. Section 66 (c) of the Trademarks Act 2010, permits the court to make such orders as it considers just.

The application would therefore be resolved on the basis of whether the amendment raises any new grounds of objection.

The grounds of appeal are:

1. The Registrar of Trademarks erred in law and fact when he failed to properly evaluate the evidence on record leading to a distinct and material error in refusing registration of the Appellant’s trademarks.
2. The registrar of trademarks ("the registrar") committed a distinct and material error of evaluation and principle in finding that the word "Java" is not a common English noun that is synonymous with the business of coffee shops and restaurants.
3. The registrar of trademarks committed a distinct and material error of evaluation and principle in not properly construing the relationship between the dictionary meaning of the word 'Java' and commercial usage of the word 'Java'.
4. The registrar of trademarks committed a distinct and material error of evaluation and principle in failing to recognise that the Appellant seeks to use the word 'Java' in the course of trade in a disclaimed and non-exclusive manner.
5. The registrar of trademarks committed a distinct and material error of evaluation and principle in finding that a likelihood of confusion would exist as to the source of origin of the services provided by the Appellant and Respondent.
6. The registrar of trademarks committed a distinct and material error of evaluation and principle in formulating a narrow construction of the reasonable consumer test, and resultantly arrived at the erroneous conclusion that a likelihood of confusion exists.
7. The registrar of trademarks exercised his discretion injudiciously in refusing the registration of the Appellant’s trademarks leading to a miscarriage of justice.
8. The registrar of trademarks committed a distinct and material error of evaluation and principle in finding that the Appellant and Respondents marks are not capable of honest concurrent usage.
9. The registrar of trademarks failed to assess and determine that the public interest is not served when a legitimate commercial enterprise is barred from exploiting a trade descriptive, and that the use of the trademarks must not be used by only one entity to stifle genuine trade competition."

The proposed amendments on the other hand are as follows:

1. The Registrar of Trademarks committed a distinct and material error of evaluation in that he:
   1. Failed to compare the respective signs and marks aurally and conceptually as a whole;
   2. Considered the Appellants trademarks and the Respondents trademarks to be mere word marks;
   3. Failed to hold the word JAVA was descriptive and either not distinctive or of low distinctiveness in relation to the services the subject of the application and therefore correctly been disclaimed; and
   4. Failed to find that there was no material similarity between the Appellant’s trademarks and the Respondent’s trademarks.
2. The registrar of trademarks committed a distinct and material error of evaluation in taking into account irrelevant matters when assessing whether there was a likelihood of confusion, and in particular should not have given any weight to;
   1. the "factual evidence of confusion"; and
   2. The similarity in the getup of the actual premises and business operated by the Appellant and Respondent respectively.
3. The registrar of trademarks erred in law when he relied on and evaluated inadmissible evidence leading to a distinct and material error in refusing registration of the Appellant’s trademarks.

I have carefully compared the proposed amendment to the grounds of appeal with the current grounds of appeal disclosed in the notice of motion. The question for consideration is whether the proposed amendments are necessary for a complete and effectual determination of issues between the parties to the appeal.

The essence of the Appellant's grievance is that the registrar of trademarks erred in law and fact and in principle and did not properly evaluate the evidence on record leading to a distinct and material error in refusing the registration of the Appellant’s trademarks. Grounds 2, 3, and 4 give the material errors and therefore amplify ground 1 of the notice of motion. Specifically ground 2 concerns errors relating to the evaluation of the word "Java". Ground 3 relates to the word "Java". Ground 4 concerns the word "Java".

In comparison to ground 1 of the proposed grounds of appeal, ground 1 of the proposed amendment deals with material error of evaluation and in paragraphs (a) (b) (c) and (d), gives the material errors. The errors are in substance generally the same as in grounds 1, 2, 3, and 4 of the Appellants of grounds of as contained in the notice of motion.

The Appellant avers in the ground 5 of the notice of motion that the registrar erred in law and fact on the principles of formulating the reasonable consumer test and therefore coming to a conclusion of the likelihood of confusion erroneously.

The proposed ground 2 of the amendment is about the likelihood of confusion and the grounds for saying so. It is in substance the same as ground 5 of the notice of motion.

The current ground 6 of the notice of motion is about the registrar acting injudiciously and thereby occasioning a miscarriage of justice.

In the proposed ground 3 of the grounds of appeal the averment is about relying on inadmissible evidence.

A person who argues the ground of acting injudiciously can argue about relying on inadmissible evidence. In substance there is no material alteration.

Ground it is on concurrent usage while ground nine is on the public interest and fair competition being stifled. These are in substance grounds which have not been reproduced in the proposed amendment.

As far as grounds 1, 2, 3, 4, 5, 6 and 7 of the memorandum of appeal as contained in the notice of motion is concerned, the proposed grounds 1, 2 and 3 of the memorandum of appeal is the same in substance. That being the case it is just a reformulation of the grounds of appeal. Because it is a reformulation of the grounds of appeal, it can be a matter of how the Applicant/Appellant's Counsel argues the said the grounds. I agree with the Respondents Counsel that where the substance of the grounds is the same, the Appellant is not prejudiced and the application would be unnecessary. The Appellant can argue the grounds and formulate any issues arising out of the main grounds.

If the Appellant was to drop grounds eight and nine, it does not have to be by way of amendment as this can be done when arguing the appeal.

The Appellant in this application is trying to reformulate the grounds of appeal and it is difficult at this stage to appreciate fully the legal doctrine that the Appellant seeks to rely upon.

Even though the court has jurisdiction to allow the Applicant to amend the grounds of appeal so long as they do not flout the intention of Order 43 rule 2 of the Civil Procedure Rules which forbids an Appellant to argue a new ground of appeal without the leave of court, am inclined to refuse the application because the substance of what the Applicant seeks in the amendment is the same and the amendment is not necessary. Secondly the court will avoid the danger of allowing new grounds of appeal to be argued outside the 60 days permitted for the filing of an appeal from a decision of the registrar. The application for amendment was filed about 66 days after the 21st of May 2015 when the ruling of the registrar was delivered.

In the case of Auto Garage vs. Motokov No 3 [1971] EA 514 Spry V.P at page 520 held that an amendment in general ought not to be allowed to defeat the law of limitation. He held:

“... Whether, if the court had power to allow amendment, it should do so if the result would be to defeat limitation and to condone inordinate delay. There is a long line of East African cases to the effect that discretionary powers should not be exercised so as to defeat limitation. This has arisen particularly in relation to the exercise of the inherent powers of the court, Mehta v. Shah, [1965] E.A. 321; Adonia v. Mutekanga, [1970] E.A. 429, but I think exactly the same principles apply whenever the court has a judicial discretion.”

Trademarks Regulations 2012 and regulation 90 is couched in mandatory words and provides as follows:

"90. Appeals to the court.

Where a person intends to appeal to court, the appeal shall be made by motion in the usual way, and no such appeal shall be entertained unless notice of the motion is given within sixty days from the date of the decision appealed against or within such further time as the registrar shall allow."

The previous rules are also in pari material. No appeal shall be entertained unless notice of motion is given within sixty days.

What is relevant is that the Appellant ought to have applied for amendment within the period having filed the appeal within a period of less than 30 days on the 4^th of June 2015 when the ruling of the Registrar was delivered on the 21^st of May 2015.

Lastly there is no application to argue another ground of appeal with leave of Court under Order 43 rule 2 of the Civil Procedure Rules and in the premises the application for amendment stands dismissed with costs.

Ruling delivered in open court on the 27^th of August 2015.

Christopher Madrama Izama

Judge

Ruling delivered in the presence of:

James Mukasa Sebugenyi jointly with Patson Arinaitwe for the Applicant

Alex Rezida for the Respondent

Parties absent

Charles Okuni: Court Clerk

Christopher Madrama Izama

Judge

27^th August 2015