Kigozi: PATENTS

You have to register patents to get protection. There is no automatic protection like in copyrights. In
patents, protection is upon Registration. There is a high threshold in proving some criteria to the
Registrar when seeking to register a Patent for an invention.

*Utility Models. Most of our inventions have already been made or invented. So where you fail here,
you can make or have a utility model. We have not really invented something new per se, but have
carried out some extra changes.

Notes:

Patent law concerns new and industrially applicable inventions, and therefore it reserves a powerful
mode of protection for inventions that meet exacting standards.

Section 2 Industrial Properties Act, a Patent is defined as a Title granted to protect an Invention. The
grant or the Certificate gives the inventor a monopoly to work the invention for a Period not exceeding
20 years.

The monopoly is not absoluteas there are Checks and Balances to curb its abuse. It should be noted
that Patent law gives a limited monopoly in order to allow for a disclosure of the details of the invention.
(Part of the considerations in Novelty include assessment whether the invention had been disclosed to
the public or not)

These details disclosed to the Registrar are available for Public Inspection so that all skilled people in
that art would be able to make practical use of the invention once its protection expires. Therefore
Disclosure is a central pre-requisite for a Patent grant. This will allow future use or improvement on the
Patent when it expires.

Justification for Patent Law

It is the most effective way of protecting inventions and the investment incurred in developing them.

Patent law protects aspects like Design, Shape of the product, especially, if the Patent relates to the
Product rather than the process.

(Lecturer) You can all create phones, but can differ in the shape, the system, the design, cameras, etc.

Patent law allows an inventor to own a property right in his or her invention.

Patent law allows for big investment or Capital investment, because of the advent of technology and its
increasing complexity as necessitated substantial capital investment. That is why most patents are
granted to corporate organizations like Pharmaceutical Industries because these can handle the big
expenses in R&D, testing of drugs, etc., which require long term investment that can only be incurred by
such companies.

How a Patent is Granted

1. Filing an Application to the Registrar, which application must show or contain the Title of the
Invention, an indication of its Technical field, a Background and Description of the invention in a
clear language with enough detail to allow an individual with an average understanding of the
field to use or reproduce the invention.

2. The Descriptions are accompanies by Visual material e.g. drawings, plans, diagrams, to better
describe the invention.

3. A Patent is granted by a National Patent Office or the Regional office (EA regional office being
ARIPO…Africa

4. IP Organization), that being URSB. This is because if you want protection in Uganda, you go to
URSB. If you want that protection to extend beyond Uganda, you apply to URSB to send it to
ARIPO. But your invention also has to pass the protection criteria or tests in the respective
countries.

Class

Section 7 Industrial Properties Act: an invention is a solution to a specific technological

problem which maybe a product or the process itself.

(A) Novelty:

Invention must be New or Novel. In patents, much as we don’t want inventions that have been
copied, but when we talk about it being new, there are more layers to something being new. In
Section 10, an invention is new if it’s not anticipated by Prior Art. Section 10(2)defines Prior
Art to mean everything made available to the Public (Disclosure) anywhere in the world by
means of a disclosure.
(Lecturer) The disclosure being talked about here is not the one during Patent application. The
disclosure referred to here is looked at negatively because of the chances of others taking
advantage of the invention before you the actual creator applying for it. So to avoid these
conflicts and issues, the law refuses disclosure. The disclosure can be through many ways, e.g.
disclosing in public through exhibition etc. So what this shows is that the law of disclosure still
suffices even when no member of the public has gone ahead to also apply for a patent on the
same subject matter.
****But there are aspects to disclosure, e.g. if an engineering thing is put in a law library, the
court may say that the fact that law students ordinarily may not understand the engineering
subject matter, the court may hold that such is not disclosure. So disclosure must to some
extent be to persons who can comprehend and make use of the invention: maybe that’s why
disclosure in open public is harder to rebut because there can be many engineers in the public
who could have understood and could have made use of the disclosed matter.
****Prototypes are not the actual inventions and hence may not amount to disclosure.
Public Disclosure is any non-confidential information which the inventor makes available to
one or more members of the public, revealing the existence of the invention and enabling
inappropriately experienced individuals (does this contradict the engineer law students analogy
above) , or even a person having Ordinary Skill in the Art to reproduce the invention. Public
disclosure can be by use, oral communication, drawings, exhibition, or any non-written means
or priority dates of inventions in the pipe-line.
(Lecturer) After making the application, the Registrar if satisfied gives a date, and that date is
called “Priority Date” that confirms you put your application and that the application satisfied
the requirements for Examination to see whether the application can be granted as a Patent.
This date despite being before the actual patent being granted, the fact that it is still in the
pipe-line, it will be good against all other applications that have not yet been made on the same
subject matter. The rest will be deemed anticipated.
Public Disclosure results in loss of patentability of the invention.

Types of Disclosure that amount to Anticipation/Prior Art

(1) The Disclosure must be Enabling/Enablement. Sython vs Smith Kline, court held that a
disclosure is
Enabling if it allows an Ordinary Skilled man to work the invention, because such a person is in
position to determine whether such an invention is workable upon analyzing. (Hence the
Engineering and Law Students analogy above)
Glax Group Ltd Application, a Skilled Man was defined to be a normal person (Ordinary
persons) who possesses knowledge in that field or Art (hence Ordinary Skilled Man)
(Lecturer) But then the question is, is there a possibility that an actual engineer could have
landed on it? Or a lawyer who on the side does some engineering… To avoid these difficulties,
Patent law becomes strict.
*Question, need the person who challenges the invention be the one who
Disclosure Must be Adequate. In Sython vs Smith Kline, for a disclosure to be a prior Art, it
must have disclosed all the essential elements of the invention. You must have put out the
substantive part of the invention, the most important part, not just the collateral parts that are
not central to the working of the invention. (that is maybe why Co’s like Apple disclose concepts
but the actual invention comes out very different from the final product) (This is how adequate
disclosure connects to enablement,
General Tire and Rubber Co vs Firestone, that a mere sign post of an invention is an
inadequate disclosure. What is adequate must be a sign post at the exact destination of the
invention. In other words, the signpost was leading people where the invention was. Court was
saying that no, what was adequate is the sign post specifically at the place or leading to that
exact subject matter so that an ordinary skilled man is in position to experiment or make use of
the invention.
(2) Discoveries made and kept Secret/Communicated in Confidence do not amount to
prior art. Catric Components vs Erons, cross sections of lintel were drawn and communicated
to a few in confidence. Court held that the patent could not be revoked because there was no
adequate disclosure.

Confidence can be making employees to sign NDAs.

Pall Corporation Application, where membrane samples were sent by the Plaintiff to the
defendant in confidence. Court found that such a disclosure did not amount to anticipation
(despite the defendant also disclosing the same to other people the Plaintiff did not know
about) because it was made in confidence.
Lucas Batteries vs Gaedor Ltd, court held that the use of batteries in cars by employees who
were well aware that the design was confidential, was not held to be an adequate disclosure
(Do Directors of a Co have an Obligation to not disclose inventions

(3) Information to obscure sources

Prout vs British Gas, where an experimental use of an Anti-vandal (vandalise) machine, did not amount
to Anticipation because the experimented subject matter lacked some important aspects to make it a
full invention. In other words, Experimental Use can’t amount to Adequate Disclosureifmade in
confidence or where the prototype is disclosed. Emphasis on prototype because it has essential things
missing from the final invention. Prototypes are for experimental purposes. Still, in this case of Prout,
they used the invention itself but because it lacked essential aspects like the final invention

Lux Traffic Controls Ltdvs Pike Signals Ltd, where experimental use of the traffic lights amounted to an
adequate or full disclosure because the contractors were there in law and equity to analyze and work
the invention. Court stated that if a disclosure is made anywhere, it doesn’t matter that a person doesn’t
know about it, or that it is in a book on an open library shelf in a corner and no one has read it, it would
still amount to an Anticipation of the patent. In this case they had argued that they did the experiments
at night when people were asleep and know one had seen. The court refused and gave the above
reasons.

Windsurfing vs Tabur Marine, the court of appeal held that a 12 year old boy who built a
Sailboard, and used it for a few weekends at a caravan site, at Hayling Island in Hampshire.
Court held that the 12 year old had effectively anticipated a later patent for the sailboard and
there was want of novelty.
Merrel Dow vs H.N Norton, where the court looked at the talking of ferfadine, and working the
invention unknowingly amounted to a disclosure even if the people who took the drug did not
know of the process taking place in their bodies.
Formento Mentmore, a pen had orally been disclosed to a party in a supermarket, and court
held that this was an adequate disclosure. She was given a pen and she used it not knowing it
was an invention. Court held that this was adequate disclosure still.
Rationaleof disclosure is to protect inventions from claims of originality and also to allow and
encourage for greater research and discovery of better methods of doing things. However in
any unlikely event that an invention is anticipated, it will not be “New” and would not have
quality of being protected, people would easily and unofficially disclose their inventions without
putting forth an opportunity to be studied for long and be appreciated.
It should be noted that Prior Art also includes matters in other patent applications published on
or after the priority dates of the invention being tested in other jurisdictions. Rmr the world is a
global market. Hence it is possible for a Patent application to be pre-empted or thrown out by
material that the inventor cannot at the time of making the application discover or inspect.
Questions:
(((((((((1. The Ordinary Man must be able to make it work. So question is, if the defendant who
challenges the patent cannot make the invention work, would that still be Anticipation?
2. Need the Confidence always be reduced into an NDA, or it can be merely oral?
3. Do Directors of a Co have to also sign NDA or is their obligation not to work in manner
prejudicial to the Co sufficient to protect the inventions made by the Co as an independent
fictious body?
4. Bainbridge states that the test is that of an Ordinary Skilled Man, and not of a World
Champion who has exceptional skill and knowledge of the invention itself. What is the
distinction between the two?))))))))
(Lecturer) Answers:
Skilled Man is on a case by case basis. Still can that person understand and work that invention?
If yes then they are ordinary skilled and there would be anticipation. But if smone cannot
understand the invention, know that the invention can be used for A B C, and cannot make the
invention work or replicate/duplicate the invention and make it work.
The Directors should ideally be the first to sign the NDA.

Class 20th, March, 2023:

(B) Inventive Step:

Section 11 IPA, states that an invention shall be taken to involve an inventive step if it’s
not obvious to a person skilled in the Art. So if it's obvious to an Ordinary Skilled
person. If itsobvious., the application can be negated.

Biogene vs MedevaPlc,Court held that an Inventive Step is doing a new thing, and if it
is a solution to a problem, the inventive step will be that method of achieving it. So you
have to elaborate the method and process you came up with the Invention. So it is
meant to protect from infringement because if you stole or copied it, then its hard for you
to elaborate all the above.

It must show something more than simply showing that the invention can easily be
done. Otherwise the Patent could extend to all possible ways of achieving the result. A
patent must be for more than just the end result/product. It must also elaborate the
processes and means of reaching that final end or product. It must show some inventive
power or great ingenuity. The justification of this requirement is to protect the Monopoly
of inventors. So basically that would be unfair to give one a Monopoly over something
that they didn't put in much ingenuity and effort in.

(Lecturer) *There are scenarios of Incremental Improvements, in that there are

subsisting inventions and smone makes research on them and comes up with a better
or new product. They top up on the already existing product. These improvements can be
Patented if you prove that you put in ingenuity and work to improve the already existing work.
If the old patent is still existing, you still need Permission/License to make those improvements
on the already existing products. An incremental work can fetch a patent.
It should be noted that old technology, if Altered/given an Incremental Improvement, can
fetch a New Patent. Protection in patents will be given in showing that greater step of
ingenuity and research. So if you show that you put in something greater than what is
already existing, you may be given a patent. The law will always allow for
improvements.
Williams vs Nye, court said that to maintain a patent, there must be a substantial exercise of
the inventive power, or inventive faculty. That sometimes sometimes very small alterations on
existing technologies or inventions can produce very important results and there can be in
those very slight alterations, very great ingenuity exercised by the patentee.
(Note that computer programs can be both copyrights and patents depending on how you
argue your case)

(C) Industrial Application:

(It is this element that distinguishes Patents from Copyrights because of the practicality in
industrial application criteria)
Section 12 IPA, a patent is industrially applicable if according to its nature, it can be
technologically made or used in any kind of industry including agriculture. Technical Inventions.
Hillers Application, court held that for an invention to be industrially applicable, it must
constitute some form of a process of getting the item a form or formula of manufacturing the
product. So basically, you must also relate the invention to an industry, that the process and the
product is applicable in an industry. You must show the practicability of the industry.
(Lecturer) Usually when there is Novelty and Industrial Application, the Registrar tends to write
back advising the party to apply for a Utility Model, because the standard for “Obviousness”
under the criteria of Inventive Step is very high. The Utility Model, despite the protection being
less e.g. for less time, but still there is some protection.

Exclusions from Patentability:

(1) Methods of Treatment of Human and Animal bodies by Surgery therapy or diagnosis.
(2) Discovery, scientific theory or Mathematical Method
(3) Literary, Dramatic, Musical or Artistic work.
(4) Scheme, rule or method of performing any Mental act.
(5) Playing a game, doing business or program for a computer
(6) Presentation of information
(7) Inventions contrary to Public Order or Morality, Public Health and Safety, Public policy,
principles of humanity and environmental conservation.
(8) Plant varieties.
Exclusions in detail:
(1) Methods of Treatment of Human and Animal bodies by Surgery therapy or diagnosis
This exclusion is based on public interest as there is a need to prevent restrictions on the spread
and adoption of new and improved methods of treatment. E.g. it would be in public interest for
all surgeons to learn of a new discovered method of surgery by another surgeon.
*This does not extend to equipment. But the processes of diagnosis are excluded form
patentability. So the surgical instruments can be patented, but not the process or method of
treatment.

(2) Discovery, scientific theory or Mathematical Method

They don’t have a technical effect. Mathematical methods apply to soooo many things and
would affect inventions of many things applying math.

(3) Literary, Dramatic, Musical or Artistic work.

They don’t have industrial application. They are not technical inventions.
They are subject matter of Copyright law and have no Industrial Application, unless if they are
part of some machine or used in some industrial process.

(4) Scheme, rule or method of performing any Mental act.

(Lecturer) Just thinking is a mental act. They are abstract in nature. You cannot know what
people are thinking. So the thoughts do not have a technical effect/industrial application. You
cannot stop people from thinking, you cannot monopolize thoughts.
It is hard to stop people from thinking and doing mental work, so mental acts are abstract and
conceptual with no technical effect or no physical character or existence. With computer
programs and software, their exclusion is in line with international trends regarding their
protection.
If computer programs are written, they fall under copyright law, but at the same time they can
be looked at as scientific methods under exclusions. On the other hand, they can also be
patented if they are applied in some practical and technical manner but it depends on the
manner in which the Patent claim is drafted.
Fujitsu Ltd Application, where a software used to generate and manipulate images of crystal
structures of inorganic material were not patentable because the software did not provide a
technical effect. It was deemed to be a Method of performing a Mental act.

Class:
 (5) Presentation of Information
This is best protected under copyright. If presented in a flow chart, it will be an Artistic work.
Other presentations will result into film, sound recording or broadcast. If information is
released orally it will not be protected in copyright law.

(6) Inventions or exploitations contrary to Public order, morality etc.

This is subject to the proviso that the exploitation of such inventions will be deemed to be
prohibited in law. (Lecturer) Of course if there is an express law barring something, then you
cannot patent it.

(7) Plant Varieties

These are protected under the law protecting plant varieties.

(Potential Course work: How have Patent protection/its

monopoly, infringed on Human Rights)
(Lecturer) Of course the law of Patents has exclusions, intended to allow for further use and
exploitation by people, issues to do with health, exclusions on methods of treatment and
diagnosis to allow for greater research on those areas, exclusions on certain drugs, and
exclusions on computer generated works which are imbedded in many other inventions. Also
Utility Models, it gives room for people to use some of these inventions because its scope of
protection is not so strict. So despite the Patent law giving restrictions and monopoly, it also
creates Exclusions as above)

Procedure for application of a Patent

Sections 21-32 IPA.
Under Section 21 IPA, an application shall be filed with the registrar, and shall contain:
(i) A request: You are requesting for protection but also protection in particular
signatory states. So it is from this request that the Registrar knows where to send the
application especially if you want the Patent to have a multi-jurisdictional effect. ARIPO etc. can
be used to effect this.
 (ii) A description of the invention: You give details e.g. in diagrams, samples,
descriptionby words, of how the invention works.

(iii) It should contain one or more Claims: A claim is like a clause in your Patent
application talking about specifically what you want to protect, the scope of that protection.
E.g. if it is an engine, you can state that the claim of protection is on the valve only, so that in
cases of infringement, they look at the valve, not the other parts of the engine for which you
didn’t seek to protect.

(iv) Must contain one or more Drawings where necessary: This goes back to description
of the invention. (Lecturer) Why the law insists on this, the enforcers want to be able to
understand and know whether there was protection and subsequent infringement or not.

(v) An Abstract: This tends to have technological information. You give a brief of what
you have
invented, and what it is going to solve since Patents are made for purposes of solving
something. So it should state how and where it is going to be used.

(vi) Other details as described by the regulations in the IPA

UnderSection 26 IPAis about paying a prescribed fee for the Patent Application.

Once the application has been filed, the Registrar accords as the filing date, the Date of Receipt
of the Application. (Section 28 IPA) (Lecturer) So the filing date helps know who has infringed
and at what time. It is good against all other inventions that come subsequent to that invention.
So all other similar inventions that come subsequently, their protection will be invalid because
your invention that you applied for first, will be Prior Art to them, hence
If there are any corrections to be made, the Registrar will call the applicant to make those
corrections and the Filing date becomes the “Date of Receipt of those Corrections.”
Under Section 27 IPA, applicant can Withdrawthe application before its grant or refusal.
However, if the applicant withdraws, there is no refund of Application fee.
Section 29 IPA, is on Publication of the Application ASAP after expiration of 18 months from
the Priority Date/Filing Date.
Under Section 31 IPA, the registrar will examine the application to see whether the
requirements are complied with. If it’s not in compliance, the applicant is called upon to
regularize the application.
Under Section 32 IPA, the Registrar can grant the Patent if it has passed the Substantive
examination.
(Lecturer) The above are as to national protection. For international protection, look at Section
34-36 IPA where the registrar transmits the application to those other countries to see if the
application meets also the criteria in those countries.

(Research) Ownership and Dealings in Patents.

Ownership and Dealings in Patents.
There is a distinction between an Owner and a Proprietor of a Patent. The inventor of an
invention, is the actual devisor of the invention. Where the invention is as a result of combined
efforts, of two or more persons, these are the Joint Inventors of the invention.
A Proprietor is a person to whom the Patent is granted and hence has the right to work the
patent. So you have rights to use the invention but you are not the actual or real inventor.
If the Inventor is not the Proprietor of the Patent, he or she has a Right to be Mentionedas
being the inventor in any patent granted and in any published application.
The Proprietor can also exist in cases where an Inventor has been Commissionedto produce an
invention (ish as in copyright law). In this case, the Commissioner becomes the Proprietor of
the invention. This is the same in Employmentwhere the inventions of an employee are taken
to be those of the employer, subject to the Employment contract.
Where there are two or more Proprietors in a patent, their ownership is equal, i.e., they are
each entitled to an undivided share in the Patent, and if one dies, his share passes under the
Will to his estate, and does not automatically pass to the remaining owner. (Rule of
Survivorship does not apply to Patent law)

17th/4/2023

Claims

A claim is what defines, the scope of the protection sought or given by the Patent. Ina Patent
application, claims define the extent of protection given by the Patent, i.e. the technical features
claimed can either be structural or functional. (Lecturer) It can be a product or process Patent.
So also there is Structural Claim, if you want protection of a Technical feature that is structural, e.g. it is
an engine but want to protect a nail, a valve etc….that is a specific part on the general whole.

There can be a Functional Claim, which is how what is being protected works, e.g. the valve or the
buttons work anti-clockwise, how you swipe on a phone among others.

A Claim is of utmost importance, both during prosecution and litigation. A claim bars or limits any
person, from using a patented invention, otherwise they would be infringing on the claim/Patent.
Therefore, the Patent owner needs to prove in court that what the Defendant person is using, falls
within the scope of the Patent.

A claim can read as follows; “An apparatus for catching mice, the said apparatus comprising a base, a
spring coupled with a base etc.” Another example could read; “A chemical composition for cleaning
windows. The said composition substantially consists of 10-15% ammonia, 1% sulphuric acid…” So you
give what it is and what it consists of or what it is made of.

Every Patent application should at least 1 claim, defining elements of the invention. It should be noted
that if a Claim reads or covers what came before examination (means that thing existed before your
invention), it will be found to be invalid for want of Novelty or that it is obvious.

Claims can be classified in terms of what they claim. For example, we have the product claim which
refers mainly to the technical features or the physical entity, secondly, the process claim which refers to
the function or the process or method of how the product works.

Justification of Claims

(1) They are critical in enforcing against infringement. Inventors should ensure that their claims are
sufficiently specific to distinguish the invention from prior Art, but at the same time, the claim should be
broad enough to provide adequate protection against potential infringers (give all the surrounding
features, so that if it is a valve, then also broaden the protection to protect the functionality).
Case: Electrical and Musical Industries Ltd vs Lissen Ltd. Lord Russell held or stated that the Functions
of a claim is to define clearly with precision the monopoly claimed, so that others may know the exact
boundaries of the area in which they would be trespassers. The claim must undoubtedly be read as part
of the entire document but the forbidden field must be found in the language of the claim. (Lecturer) So
the language lawyers use is important because if the language creates a narrow protection then the
client may be affected.

(2) Claims are critical during Prosecution as they exclude any party from carrying out the steps in
the
claim. So the patent owner needs to demonstrate in court, that what the Defendant is using or applying
for falls within the scope of his or her claim.
(Lecturer) A specification is where the inventor illustrates, describes or discloses the invention in so
much detail that an experienced person could understand and use the invention. Hence a Specification
is the description of the invention with its claim. (Lecturer) So the diagrams and drawings that you
attach are the specification.
Drafting a claim

A claim includes the following parts;

(1) A preamble – this recites the class of the invention and states its primary properties, purpose or
the field. See example of the rat trap. Example of Preamble: A therapeutic composition for treatment of
Cancer. The composition has component X that has… (Lecturer) So the example starts with showing you
the Field “therapeutic composition for treatment of cancer” so you know it falls within drugs. Then it
goes on to mention the properties or composition.
A Preamble may also reference another Claim to explain itself. E.g. “The method of Claim 1 is dependent
on the Claim below.” So you are saying that for this particular feature to work, e.g. the valve, for it to
work, it depends on another claim below.

(2) A Transitional Phrase –this characterizes the elements that exist in the invention. The
transitional
phrase has words like, “containing, consisting, comprising etc…”

(3) A Set of Points or Marks- These describe how the invention works. E.g. “An X, Y and Z that are
connected to point A and B…” These elements or points should be described as though they interact and
work together to achieve a desired result. So that when point X does a,b,c,d it leads to Point Y doing
d,e,f,g.

(4) Purpose Clause- It further describes the purpose of the overall invention or what it aims to
achieve. E.g. wherein W simultaneously controls X and Y, it accomplishes purpose Z.
 Mr. Mpanga
Topics

Passing Off

Confidence

Passing off

It is about protection of brand names, descriptions, get up, and other manner of doing business. It is an
invasion of property belonging to a business.

We may not want to know who is running the business, because there is an aspect of property called
“Goodwill.” So essentially, passing off is about protecting the Goodwill of a business. It is loosely defined
as “valuable or commercial reputation, the following, and the attractiveness of a business.” Goodwill
again is not necessarily the same as reputation because there is reputation without value yet goodwill
has value.

Passing off has an aspect of Misrepresentation, that a particular state of affairs of another business,
applies to them yet it doesn’t. There can be misrepresentation that the author endorsed the good, so
people buy believing there to be an association. The author will be losing custom and revenue. There is
also a fear of Inferior Quality due to the misrepresentation.

The General Rule: No man has a right to pass of goods or services of another as if they are his or hers.

We shall see the distinction between Passing off and Reputation. Reputation is easy. Easy definition of
reputation is sth can be well known yet has no attractive force to bring/attract customers; analogy of
Frederick Mpanga and Sylvia Tamale. So Goodwill unlike reputation, is “Good Reputation”, so it can be
reputation compounded with the attractiveness. It has a force of customs, custom meaning a following
of customers.

Inland Revenue vs Muller (1901) AC 7 per Lord MacNaughten, on Goodwill: Goodwill is also an attractive
force which brings in custom. The benefit a business gets from existing for sometime. (Lecture) This definition
presumes that a business must exist for a long time for it to have Goodwill: Question is, need it be a big business,
need it have existed for a long time, what if it is new with a new product and attracts many people?

Question; Can a Non-trading entity like a Religious institution have a cause of action in Passing off; analogy of
Papacy (Pope). So they are not restricted to only business institutions.

The protection is wider than Trademarks because Passing off offers protection even over non-registered
marks. (See Britania Allied Industries Ltd vs Aya Biscuits (U) Ltd)

*One of the considerations in assessing the Damage: Due regard is given to the Nature of the Customer.

Cases
Star Industrial Co. Limited vs Yap Kwee Kor [1976] FSR 25: it points to aspects as to
how the right arises, and protectable subject matter in Goodwill. The subject matter and
defense was that the person had ceased to conduct business. So you can sue in passing off
even when the business has ceased. It’s called Residual Goodwill.

It is increasingly becoming actionable in the courts of Uganda in the form of Image Rights.
See ….Winnie Asege vs Opportunity Bank.

Fictitious Characters,e.g. cartoons, Question: if there is a cartoon character (Character Merchandising)

made by Disney Inc, what happens if smone say sells shirts with those cartoon characters…Rihanna
Fenti vs Topshop.

There is Brand Merchandising. E.g. 23 for Michael Jordan. SO the individual can argue that the Goodwill
in 23 or other brands, belong to them.

Read Supa Brite Limited vs Packed Enterprises Limited (2001) 2 EACA 563

Law of Confidence

It is about keeping secrets. It is born from Equity, and individual who discloses to you in confidence,
expects that you will keep such confidential. The reason why it is disclosed in confidence and not in
public, is the same reason why the right and e protection exists.

Courts will bear in mind the fairness of disclosure without the permission of the maker of the
disclosure/author of the information.

You may come across information as a Third Party and still in fairness you would be obliged to keep it
confidential.

*So if someone reveals a trade secret is that you have to keep it confidential. There is no need for
contracts. So the key aspect is about the Idea of the subject matter(See Digital Solutions Ltd vs MTN)

Digital Solutions Ltd vs MTN. (Consent judgment, so you can look at pleadings)Theidea. The other
material was the binary language in the source code.
The information must have Confidential Quality and it is not everything which is trivial. Not each and
every disclosure is of confidential quality. One of the modes of determining, is the mode of
dissemination.

What is the position of third parties in the law of confidence. The concept of Conscienceapplies.

What about Employees and their access to confidential information.

Class: Discussion
Goodwill before incorporation
Goodwill can still be established even when the goods have not yet been put on the market. (See Inland
Revenue vs Muller)

Hence in BBC vs Talbot, the case was on traffic systems. Court held that despite the products not being
on sale at the time; in that the system had not yet been launched, its advertisement and appearance on
Top Gear program on BBC, it had established goodwill in terms of traffic software system and was well
known.

Big Companies and small companies

Considering in Inland Revenue vs Mullerit was said that goodwill distinguishes

Goodwill is not limited to big companies, and also small companies can, provided that it has set
itself up and is known for that product.

Standard vs Re…plaintiffs carried on business as ice cream vendors in vans. In 1966 sought to
diversify the trade to mobile fish and fries. So they purchased a van and marked it “Mr. Chippy.” The
plaintiff and defemdant sought to enter into a partnership but did not go through. The Defendant had
also started a similar side business, also calling it “Mr. Chippy” and started using it in the course of trade.
The plaintiffs sought an injunction and the Defendant argued that the plaintiffs hadn’t gotten goodwill.

Court held that there was evidence of substantial profits and business despite being in a short time,
even in 3 weeks depending on the activities being taken. So this shows that even businesses that have
been trading for a short time can also prove goodwill. In the Reddaway vs Benhamcase, court
noted that the name “Camel Hair” belting had been used for over 12 years and had become distinctive
and created goodwill despite the words being descriptive of the goods.

What it shows is that there is no static period of time for establishment of goodwill. The court takes into
consideration the surrounding facts, circumstances and the activities undertaken by the claimant in
trade so as to establish the alleged goodwill.

Locality and scope: Is goodwill affected by Jurisdiction

In Anheuser Busch Inc. vs BudjovickyBudwar , brought a claim in the UK but

did not have customers or trading presence in the UK as opposed to the USA. Yes they had
reputation but did not have goodwill in the UK and hence could not successfully sue the
Czech brewers in the UK.

In Maxims Limited vs Dye, claimant, a restaurant in Paris had extensive

goodwill and popularized by people in England. Claimant sought to stop a
Norwegian restaurant from trading under the same name. Question: whether
the development of e-commerce

Starbucks vs British Sky 2019, subscription service in Hongkong. It came

to be known by people in UK through websites, international airlines among
others and had a reputation of Chinese communities in the UK. Later, the
defendants made their own but not free.

J. Bollinger vs Casta Bravo Wine Co. Limited, the wine had been
produced in Costa Brava of Spain, marketing it as “Spanish Champagne.”
The French growers and Shippers sued to stop it.
The court noted that Champagne is said to be originating from Champaign
region of France, hence goods to qualify as champagne, they must come
from that region. (Was there secondary signification) In this case, court
held that the French growers had a goodwill connected with the word
“Champagne”

It is noted that purely descriptive terms without any secondary signification

do not attract a case in passing off. Office Minister vs Westminster:
Plaintiff traded under Office Minster cleaning and the Defendant in
Westminster cleaning. However, later the Plaintiffs changed to Office
Cleaning Services while the Defendant changed to Office Cleaning
Association.
A descriptive word can easily lose goodwill. In Knight vs Beyond
Properties 2007, claimant authored books called “mythbusters”. It
was descriptive but also had goodwill. However after many years, …

Words
(Common stock of language) The goodwill in common words (common stock language) comes
after secondary signification. SeeReddaway vs Benham.
(Same name: Different products) It is possible for two traders to have goodwill in the same
words/names where both traders trade in different products. In the case of Granada Group vs
Ford Motor Co: that goodwill between the TV Co and the Car company was completely differently
and could both exist at the same time. Hence the principle here is that there can be

Distinguish from:

Provident Financial vs Halifax Building Society : Claimant had substantial goodwill in Motor
insurance services. The Defendant a known building society also later came up with its Motor Insurance
services. Court held that it was reasonably arguable that the Defendant being allowed to move into
Motor Insurance, it would cause Misreprestantion and passing off of the Defendant’s insurance services
as those of the plaintiff.

Packaging

This can relate to the whole packaging or an element of it.

Hodginson vs Wards Mobility: Case was on cushions for medical purposes. Court held that
Passing off can occur even when appearance of goods was copied. It was not restricted to a name, mark
or sign.

Reckitt & Colman Products Limited. vs Borden Inc .: juice in a

lemon shaped plastic container. The Defendant sold the same in the same lemon shaped container but
only slightly larger. Court affirmed that the plaintiffs could successfully sue for passing off.

Character Merchandising

Some people become famous in particular fields that their names are able to attract custom. Hence by
those people, or their names having that attractive force, they have goodwill.

David vs BBC: he was a presenter and known as “uncle mark”. There was a Co that traded in wheat
and named it “uncle mark.” He sued. Court held that in the law of England, a man is not
entitled to protection of their fancy name in a vacuum. Hence he enjoys a reputation in that
name is respect of some goods which he sells or some profession which he himself is in. Hence
there must be a common field of activity that is why the element of confusion is essential.
Also, you must show that the Defendant had the objective. In this case, the Plaintiff was a radio
presenter while the Defendant was dealing in Wheat.
Wimberley case: Someone incorporated a Co for selling copyrights and named it Wimbos. Note
that the cleaning Companies that worked at Wimberley were commonly known as Wimbos.
Distinguish the above from BBC vs Talbot where the court said that the confusion was real. BBC
was trying a broadcasting system for cars called CARFAX and the Defendant had a car company
called CARFAX.
(Test) The common field of activity may be one which is actual, or not actual but reasonably
assumed by a reasonable man from the same or use of the same name. Hence in that case, the
business of selling copyrights was not the same as the business of cleaning and hence the
action of character merchandising could not be made out.
Note that there has been a migration from the above test “common field” as seen in the
Rihanna Fenty vs Topshop case.
In the Rihanna Fenty vs Topshop case, the judge laid out various principles on character
merchandising.
He started by saying that there is no right on a celebrity to control or monopolize the use of
their name or image (in a vacuum: David BBC case) (contrast with Winnie Asege vs Opportunity
Bank) as if it were a trademark, nor can anyone complain for simply being photographed. That
person can sue in breach of contract, passing off among others.
Character merchandising looks at exhibiting images, themes or articles that have become
famous.
It is not necessary to prove that the members of the public think that the celebrity endorsed
those goods.
They must demonstrate Misrepresentation.
Counsel for Rihanna had argued that the mere fact that a celebrity’s image or mark or name is
on a good, automatically tells the public that the celebrity endorsed it. Simply because a name
or image of a celebrity appears on a product, does not automatically mean that the celebrity
endorsed it, because one may acquire it merely because of the product being cheaper and
other reasons.
Collective Goodwill
Here more than one entity contributes to formation of goodwill.
Scandecor Development vs Scandecor Marketing case:
Max Horticulture (1999) RPC:

Residual Goodwill
SeeStar Industrial vs Yap Kwee.

(Lecturer) In Character Merchandising, look into Endorsements too.

What about Licensing in Character Merchandising?
Can there be Innocent Misrepresentation as opposed to a deliberate Misrepresentation?
- What is the meaning “in the course of trade. “Is it still possible to sustain a defense of “in the
course of trade” in this day and age? *Goodwill is not a monopoly of businesses carrying out
trade for profit or commercial purpose. Goodwill can also be used by those philanthropic
companies.

Marie is a type of biscuit not a name of the biscuit. Same way “sneaker” is a type of shoe not a
name of a particular kind of shoe. However one can sue for “Nike” because Nike is a name of a
shoe not a type of shoe.
There need not be actual proof of damage, but there can be a likelihood of damage. So it is
arguable that in fact there is no loss, so much so if they buy from the Defendant and instead it
triggered profits as purchasers thought the Plaintiff increased the quality of their goods or
products.

Question: Discuss the notion that the Defense enunciated in the Uncle Mark case does not
have any standing in society today for it has lost its viability and bite. (Question requires to
read Course of Trade)
When we are talking about Misrepresentation, we must consider a Reasonable purchaser, not a
sophisticated one by knowledge or experience.

Class
What is the difference between Spalding vs Gamage, and Reckitt vs Borden….difference is in the
number of elements of passing off. So what are the useless 2 elements that are no longer being relied on
as essential elements of passing off in current or recent cases.

The gist of Passing off action is Misrepresentation.

(Gist/Purpose of Passing off action) United Biscuits vs Asdar Store….deception is the

gist of passing off, but no essential necessity to prove that indeed the Defendant intended to deceive
(rmr there can be Innocent Misrepresentation). How was confusion proved in this case? United Biscuits
carried out a survey of the consumers, and showed that they believed that the squares were made by
United Biscuits or an association of United Biscuits.

(Lecturer) Deception is the end result of Misrepresentation (that is why in Reckitt vs Borden the court
held that the question to ask in Misrepresentation is if the Defendant’s actions are not restrained, that
the Public is likely to buy the goods believing them to be those of the Claimant or for which the Claimant
is associated: This shows that the Defendant’s misrepresentative acts are the ones that lead to
deception, are the ones that lead to confusion. Also David Bainbridge says that there cannot be a
passing off action if Mispresentation can be seen through by the Public so much so that they cannot be
confused: Again, this shows that ….Read Plicks Products case. Read Super Bright case. You will find the
general trend in cases that once a view is taken that a mark is well known to below to X, then there is
passing off.

There is a huge possibility that because the mark is established, then there is passing off.

Nice House Plastics case, court pointed out that it would be hard to establish that there was damage,
because the goods had been detained under a bond of court, and hadn’t come onto the market…so as
to prove that customers had bought them thinking of them to be those of the Claimant. This answers
the question of Can there be loss/damage if the representation has not yet been effected but it likely to
come into effect? The goods hadn’t come into the market and hence damage could not be proved as an
essential element of passing off. ***Note how this is different from the BBC vs Talbot case.

(Question) In Allied Biscuits, there were over 19 brands of Marie Biscuits…How is Damage to Goodwill
proved? Is it enough to argue that in the context of passing off law in EA, the decision in Super bright is a
game changer?

Question: How do you prove that there has been confusion? Office Cleaning vs Westminster…

Question: Need Misrepresentation be intentional? David Bainbridge…

Question: What if the customers are not confused? Tamworth Harrod vs Thomson Free Newspaper….

Question: Is the requirement that “Misrepresentation in the Course of Trade” still a necessary element?

Read: Anglo Fabric case……Standard Signs vs Shandard Signs…

Law of Confidence
There must be disclosure of information.
Areas of concern:
Question whether any kind of disclosure warrants protection in the Law of Confidence. Thence,
due regard is given to the kind of information which is disclosed, and the method of disclosure.
Those two can be self-defeating so that there can be no confidence however private
information of a Public nature is disclosed….So public knowledge or info that is common base
cannot be protected. It will also be defeating if it is private but it is disclosed in a manner which
makes it no longer confidential, in other words “it is blurted out” See the Saltman Engineering
case….Coco case….
It will reiterated that Confidence “bites instantly.” Confidence applies immediately in the
circumstances
The information must have the qualities of confidence…
There is no need for existence of a contract: the law implies that it fastens on the conscious.
The Confidential quality makes an assessment of the information.
Ordinarily it is said that the law protects information of an Economic value: but that is not so, it
also protects information of a private nature such as “Personal affairs.”
The rationale of confidence is to stop info of a confidential nature from spilling over into the
public domain, hence info in a Public domain cannot be subject of confidence. Public Domain is
akin to ‘Prior Art” so much so that the impugned information must be tested against
information in the Public Domain.
The person must reasonably believe that it is not in the Public Domain because it is possible for
confidential information to be derived partly from information in the public domain.
It is common when talking about Disclosure, that the sender and recipient, the sender expects
that the recipient will not disclose it. So what happens if there is a 3 rd party? Is it a defense for
smone to argue that they are a 3 rd party, that they are not a direct recipient of confidential
information and hence could disclose it? Is there such time that the conscious of a 3 rd time will
become aware that the information was Confidential? So find out if, where and how, 3 rdparties
can be bound in Confidence. This also means that one must research on the classifications of 3 rd
parties.
As to Conscious and Risk, does the law envisage that 3 rd parties can constrain themselves by
applying conscious so as not to look into the information that is alleged to be confidential?
Explore the Employer-Employee-and Ex-employee relationship.