THE LAW RELATING TO TRADEMARKS IN UGANDA.

CHALLENGES AND PROSPECTS

BY

APIOESTHER

LLB/10018/81/DU

A DISSERTATION SUBMITTED TO THE SCHOOL OF LAW IN

PARTIAL FULFILLMENT FOR TI-lE REQUIREMENTS FOR THE

AWARD OF THE DEGREE OF BACHERLORS OF LAWS OF

KAMPALA INTERNATIONAL UNIVERSITY

JUNE 2012
 DECLARATION

I declare that this dissertation entitled "The law relating to Trademarks in Uganda.

Challenges and prospects '' is my own work, except where due acknowledgement is made in

the text. It docs not include materials for which any other University degree or diploma has been

a\\'arded.

... c.t5
7 .~~···············
APIOESTHER

Reg. No: LLB/ 10018/81/DU APPROVAL

I, Joseph Kyazze, do hereby certify that I have supervised and read this study and that in my

opinion, it conforms to acceptable standards of scholarly presentation and is fully adequate in

scope and quality as a dissertation in partial fulfillment of requirements for the award of the
\.

degree of Bachelor of Laws of Kampala International University,"

.. J~s~~az~e )

(
Supervisor

JJ.s ~ /~ ~ :).0 I')-

Date: • • 0 • • 0 •• 0 . 0 0 . 0 •••• 0 •• 0 0 · / · 0 • • 0 0 0 •••• •••• 0 •••• 0 • ••••
 DEDICATION

This research paper is dedicated to my late father Mr. Elayu Steven who inspired me to do Law

May His SOUL Rest in Etemal Peace Amen

It's also dedicated to my family members most especially my mum Ikareut Betty and my sister

Catherine for having paused there financial plans in order for me to smile had it not been for

them this course and dissertation would be just a dream, thank you so much.

ii
 ACKNOWLEDGEMENT

I thank the almighty God for the strength, good health, the wisdom and financial support that he

provided for me so as to enable me complete this course successfully.

I sincerely appreciate the contributions rendered to me both morally and financially by my

mother Mrs. lkureut Betty, my brothers: - Tony, Moses, Steven, Samuel, William, my sister

Catherine and friends to ensure that this dissertation is a success.

Special thanks to my Supervisor Mr. kyazze Joseph, whom I highly appreciate for his

guidance, advice, encouragement, patience, care and moral support rendered to me during

my University education and in particular this dissertation despite his busy schedule may

God reward you abundantly

Gratitude is also extended to all my lecturers especially Mr. Sewaya, Assoc. Dean school of

law for there ,unconditional love and support during the four year of study and the time of

writing this dissertation, thank you so much

Lastly I thank all my classmates especially my fi·iends for their support they made a strong

Team
 LIST OF CASES

I. In ANGLO FABRICS (BOLTON) LTD & ANOTHER VS AFRICAN QUEEN LTD

&ANOTHER, HCCM APP NO OOOI7/2011

2. V WEYERS CO, LTD VS. L.E FIELDS AUTO SERVICES LTD (1954)71 RPC

3. COCA-COLA EXPORT CORPORATION VS. REGISTRAR OF TRADEMARK

(1969) E. A 677

4. MACDONALD'S CORPORATION VS. JOBURGERS DRIVE -IN RESTAURANT,

(1997) S.A 1

5. NAPRO INDUSTRIES LTD VS FIVE STAR INDUSTRIES LTD & STARLITE

INDUSTRIES

6. RE WORTHINGTON AND CO TRADEMARK (18S6)14 CI-1 D 108

7. PARKE DAVIS AND CO LTD VS. OPA PHARMACY (1961) E.A 556

8. SLAZENGER X FELLTHAM (1954)71R.P.C

'!. NICE AND LOVELY PRODUCTS LTD VS NICE & SOFT LTD HCCM APP

N0256/2011

iv
 LIST OF STATUTES

I. TRADE MARKS ACT 2010

2. PARIS CONVENTIONS FOR THE PROTECTION OF INDUSTRIAL PROPERTY OF

1883

3. (TRIPS) AGREEMENT ON TRADE RELATED ASPECTS OF INTELLECTUAL

PROPERTY RIGHTS

4. TRADE MARICS ACT CAP 217

v
 ACRONYMS

I. (WTO) World Trade Organization

2. (TRIPS) Agreement on Trade Related Aspects of Intellectual properly Rights

3. (WIPO) World Intellectual property Organization

4. (ARIPO) Africa Regional Intellectual Property Organization

vi
 TABLE OF CONTENTS

DECLARATION ........................................................................................................................... i

DEDICATION .............................................................................................................................. ii

ACKNOWLEDGEMENT .......................................................................................................... iii

LIST OF CASES .......................................................................................................................... iv

LIST OF STATUTES .................................................................................................................... v

ACRONYMS .. , .............................................................................................................................. vi

TABLE OF CONTENTS ............................................................................................................. vii

ABSTRACT .................................................................................................................................... x

CHAPTER ONE-.:: ... :....................................................................................................................... 1

1.1 Introduction and Background to the Study ................................................................................ 1

1.2 The Problem Statement... .......................................................................................................... .4

1.3 OBJECTIVES OF THE STUDY.............................................................................................. .4

t
1.3.1 Main Objective ...................................................................................................................... .4

1.3.2 Specific Objectivel ................................................................................................................ .4

"
1.4 Method ...................................................................................................................................... 5

1.5 Scope of the Study ..................................................................................................................... 5

1.6 Significance oftl;e Study ........................................................................................................... 6

1.7 Literature Review ...................................................................................................................... 6

vii
1.6 Synopsis of the Study ................................................................................................................ 9

Chapter one: Introduction ................................................................................................................ 9

Chapter Two: Historical Developments .......................................................................................... 9

Chapter Tln·ee: Protection under the Law Applicable ..................................................................... 9

Chapter Fonr: The Relevance of Trade mark ................................................................................ 10

Chapter Five: Recommendations and Conclusions ....................................................................... 10

2.0 Historical D~velopment. .......................................................................................................... 11

2.1 Origin and Development of Intellectual Property Protection .................................................. 11

2.2The Development of Intellectual Property Law in Ugandan .................................................... 14

2.3 Observations ............................................................................................................................ 16

3.0 PROTECTION UNDER THE LAW APPLICABLE ...........·................................................... l7

3.1 Protection under the Uganda Trademark's Act 2010 .............................................................. 17

3.2Thc Development of Trademarks Law ..................................................................................... 17

3.4 The Concept of a Trade mark .................................................................................................. 18

3.5 The Nature of a Trade Mark .................................................................................................... 21

3.3 Observations and Commentary................................................................................................ 35

4.0 The Relevancy of Trademarks law in Uganda ........................................................................ 37

4.1 Areas of Inadequacy under the Act ........................................................................................ .37

4.3Relief Granted ........................................................................................................................... 41

4.3 Observation and Commentary ................................................................................................ .49

viii
CII/\PTER FIVE ........................................................................................................................... 51

5.0 RECOMMENDATIONS AND CONCLUSION .................................................................... 51

5.1 Observations ............................................................................................................................ 51

5.2 Recommendations and Possible Options for According Better Trademark Protection ..........52

5.2.1 The law ................................................................................................................................. 51

5.2.2 Institutional Framework. ....................................................................................................... 53

5.2.3 Social ..... o••••.•••.•••••••••••••••••••••.••••••••••..••••.•..•••••.•..•••••..••••••••••••••••.••••••••••••••••••.•••••••.•••••.•.•••••.. 54

REFERENCES ............................................................................................................................ 55

ix
 ABSTRACT

the study of the topic the law relating to trademarks, challenges and prospects Mainly analysis

the protection of a Trademark under the existing law that's the trademarks ion act 2010,the

relevancy of the protect ion offered and its extent of Confonnity with international treaties that's

to say the TRIPS, the Paris Convention on the Intellectual Prope1ty Right. The study also

answers the question of public awareness

X
 CHAPTER ONE

1.1 Introduction and Background to the Study

The law of trademarks is part of the wider legal regime covered under intellectual property law.

Therefore the evolution of the law of trademarks can only be analyzed in the context of the

development of intellectual property. The genesis of intellectual property dates back to 600 or
1
more years ago, having originated from the Italian city states of Genoa. However, to-date there

is still a debate as to what should qualify as protectable snbj ect matter and what should not.

Intellectual property law refers to a product of human intellect that have commercial value and

that receives legal protection. It emphasizes creative work, products and processes, Imagery,

inventions and services and is protected by patent, copy right, Trade Mark and trade secret laws. 2

Intellectual property consists of several separate and over lapping legal disciplines each with

their own characteristics and terminology that's to say p~w granted to the invention of a

new non-obvious invention. Copyright law granted for original creative expressions produced by
'
Authors, composers, artists, designer's programmers and similar creative individuals. It doesn't

protect ideas and facts, only the mmmer in which this ideas and facts are expressed, and

trademarks law which protects the rights of businesses who use distinctive names, designs logos

slogans on other signifiers to identify and distinguish their products and services. This protection

1
T.A Blanco whiLe and Robin Jacob Kenly's Law of trademarks 12"' Ed London and Maxwell1986 Pg 2
1
P,11ents, Copyrights & trademark an intellectual property Desk reference by Attorney Richard Stirn 2006

1
can last as long as the company uses it in commerce. Examples of such trademarks are coca-cola

and general mills which have been protected for over a century. 3

The CO!llillercial value of intellectual property comes from the ability of its owner to control and

exploit its use if the owner could not legally require payment in exchange for the use; owners in

of Intellectual property would have little if any no commercial value. 4

A Trade Mark !s distinctive word, phase, logo, graphic symbol or other device that is used to

identify the source or the product or service and to distinguish it ii·om competitors. Some

examples or trademarks arc: - Samsung Cor electrical appliances l(lr example phones, Philips for

flat iron, Techno lor phones, L.G living the good lif'e lor electrical appliances Betty Crocker for
5
rood products and Microsoft for soft ware.

A trade mark can be more than just a brand name or logo; it can include other non- functional but

distinctive aspects of the product or services that promote and distinguish it in a market place

such as shape, letter and numbers, sound, smell, or color, title character name and other

distinctive features of movies, televisions, video programs can also serve as trademarks when

used to promote a product or services. A service mark is the same as a trade mark. a service

name promotes services some familiar service marks include MC Donald's for "food services"

Kinko for photocopying services, M .T.V sLOG television network services and Olympic games

multi-coloured interlocking circles for international sporting events 6 •

'Ibid at pg 3
4
Ibid at Pg 2
5
Ibid at Pg 340
6
1bid at Pg 340

2
Besides trademarks, a product can also be distinguished by get-up. A product may be sides logo,

label come to be identified by its distinctive shape or packing for example the choice of color on

the Kodak film package, like wise a service may be identified by its distinctive decor e.g. the

decorating motif used by the old navy clothing stories. However, functions aspects of trade dress

cannot be protected under trademarks law.

It's important to note that trademarks law confers the most protection to distinctive names, logos

and other marketing devices. Trademarks become distinctive or strong in two ways; they are

born distinctive inherently or they achieve distinctiveness through sales or advertising.

Trademarks include a tme trademarks, trade names, service marks collective marks and

ce1iification marks. All of these marking identify the ownership rights of the manufactures,

merchants and services establishments they are all protected by the trade marks law.

Trademarks generally have several functions from the prospective of an owner of a trademark. Is

the right to put a product protected by the mark into circulation for the first time, from the point

of view of a consumer, a trademark services to designate the origin or source of a product or

service to indicate a particular standard of quality, represent the good will of the manufacturer

and finally protect the consumer from confusion 7 •

It's worth noting. that despite the adverse functions of u trade mark th:rc is little know of it in the

real business world in l(tct a majority of the people don't know the law relating to trade marks.

0
'Lous Atman, the taw of unfair competition, trade Mark & Monopolizes 4' Ed at pg 42

3
1.2 The Problem Statement

The Trade Marks Act 2010 provides for the protection of trademarks and trademarks owners

from infringement by protecting the good will of the manufacturer, providing for remedies such
" the Act fm1her
as damages, injunction etc to registered trade mark owner in case of breach,

prohibits passing off of goods. Howeve;,despite the provisions bf the Act, there are still cases of
infringement of trademarks as though there is no law in place.

1.3 OBJECTIVES OF THE STUDY '

1.3.1 Main Objective

The researcher's main concern i~ to analysis the law &gvernin_g intellectual proee~ in U_g~nda to

be preeious the trade marks Act 20..I0 and to determine loopho

.
les.
"--·
Visas vie consideting options

or strategies ~hat can be applied to cover loopholes if there are any in the legislation.

1.3.2 Specific Objectives

i) The study also intends to put forward the case for the ~ecessity or impo11an~ of

intellectual propet1y, specifically trademark.

" '

ii) To examine the relevant legislation aq.d analyze th<( provision 111 place to protect

tradet~ark in ~etail so as to det~rminy their ;dequacy in fulfilling trade make

r ...... -~

protection.

iii) To analyze the problem of inadequate legislation, analyze the remedies provided and

their effectives under our social- economic circumstances.

iv) To analyze the reasons why the law of trademarks has not effectively developed 111

Uganda.
\
4
\
 v) To study also aims at suggesting a policy or strategy where loopholes have been

established under the Act.

1.4 Method.

In an attempt to answer the objectives the researcher adopts qualitative mode of research.

Therefore the writer will use data collected by means of research which will comprise of libetty

information, text books, statutes, case law, seminar papers and many other legal related materials

to the subject matter. The writer adopts this mode of research because it's appropriate for the

topic since it entails the analysis of the law, it's easy to use since there is no interviewing, and

it's also cheap compared to other modes of research.

1.5 Scope of the Study

This study shall cover the geographical area of Kampala in Uganda; the provisions of the trade

marks Act 20 I 0 relating to the protection of trade marks the study shall analyze the question as

to whether the trade marks law is adequate and relevant in Uganda. In attempting to answer the

previous questions the study shall consider domestic legislations from the period of 1902 to 2012

this therefore includes the 1902 order in council, the repealed trademarks Act, the trademarks bill

2008 and the Trademarks Act 20 I 0 and other intemational instruments such as the Harare

protocol of African Regional Industrial Property Organizations, Trade Related Aspects of

Intellectual Property Rights (TRIPS].

5
1.6 Significance of the Study

The Trademarks Act 2010 is a new law which has lasted for a period of only two years from the

time it was enacted. It's imp01iant to note that the trade marks Act20l0 was enacted to address

issues that the repealed trademarks Act did not address among others includes the protection of

service marks, exploitation of h·ademarks, assignment of trademarks. The study will therefore be

useful in establishing the extent to which the trade marks Act 20 I 0 is relevant to a trademark

owner in terms of alTering protection to its trademark.

I. 7 Literature Review

There is a lot of literature written on intellectual propetiy as whole however when it broken-

down to the aspects of intellectual property trademark has literature but is limited to web

material, reports ,articles, and textbooks as seen below:-

Merges, Menell, Lemley, in their book intellectual property in the new technological Age

3,." Edition publishers

Clearly brings out relevancy or purpose the early marks, the first purpose was they were a form

of advertizing allowing markers to get their name in front of potential customers secondly they

may have been used to prove that the goods where sold by a patiicular merchant thus helping to

resolve ownersl~ip disputes and also served as a guarantee of quality in this analysis he compared

it with the modern practice where trademarks are widely viewed as devices that help to reduce

infonnation and transaction costs by allowing customers to estimate the nature and quantity of

goods before purchase 8 •

'Merges Menell Temley Intellectual property in the new technological Age 3'' Edition at pg 529

6
He fmiher contends that Trade Mark law was relatively under developed in the early 19th

Century no Trade Mark infi·ingement case was decided in the U S before 1825. He also shows

his decetiification he states that intellectual propetiy despite its name was not valued for

intellectual reasons at all but because of its mercantile and industtial application9 discuss the

various sexual separate overlapping legal disciplines of intellectual propetiy with their own

characteristics and tenninology which include copy right, patent trade mark, trade secrets, he

also brought out the commercial value of intellectual propetiy which comes from the ability of

its owner to control and exploit its use if the owner could not legally require payment in

exchange for use of ownership of intellectual propmiy would have little if any commercial

L.W Melville in his book precedents on intellectual property and international licensing is

seemingly wholly in support of protecting property rights when he calls on the public that they

ought to give encouragement and champion the cause of men of imagination whose

technological feats open up so a venues as well as stimulate competition. He goes on to argue

that more encouragement is not enough but a precise mechanism ought to be put in place which

would determine to what extent that encouragement is deserved. 11

Intellectual propet·ty patients, Trade Mark and copyright in a nutshell by Authur miller

have also made a generous contribution to this subject. He expresses his sympathy for

trademarks protection when he asserts that at the host basic level it is unfair competition for a

competitor to .. palm orr· his goods as those or another to this,he adds that the essence of unfair

'Ibid at pg 530
10
Ibid at pg 2
11
L. W Melville precedents on Intellectual property and international licensing 2"d Ed

7
competition in trade generally is completely begun when one trader gains an unfair advantage by

passing off his product as the genuine products of another trader. This makes it necessary to

protect different competitions in the markets against infringement of their trade mark. 12

Development dimensions of intellectual property in Uganda transfer of Technology, Access

to Medicines and Textbooks, 13 This project on intellectual property rights and sustainable

Development in Uganda was carried out with the main 'objective tiT examining the countries

intellectual property polices are in line with access to technology Transfer, Access to medicines

and Access to text books in doing this background in Uganda and the pe1tinent institutional set

lljl provides a detailed analysis or the domestic intellectual property legal framework, before

marking recommendations for suggested legislative amendments this recommendations include:-

Uganda's level of teclmology development needs to be reflected in the country's institutional

intellectual prope1ty and technology structure. Technological capacities may be promoted

through the transfer of techno!ogies by foreign investors, but such a transfer cmmot take place

without existing absmption in the host country, another recommendation institutional set up of

country's intellectual prope1ty administration, the government should consider the establishment

of a national intellectual property office staffed with, inter alia, technical expe1ts ,in addition to

legal and administrative staff for the intellectual prope1ty registration procedure. Much as this

recommendations are not specifically for trade mark they can still be beneficial in the

development of trade mark law.

12
Intellectual property patents, trade mark and copyright in a nut shell by Auther miller
13
Report by the united Nations conference on trade and development.

8
The Report of the Committee on legal parliamentary Affairs on the trademarks Bill, 2008

has contributed to the development of trade reason being it was the committee which made

modifications , justifications and recommendations in the trademark bill 2008 that where later on

adopted by parliament and passed into the trade marks Act 2010.

1.6 Synopsis of the Study

Chapter one: Introduction

.- . ~-.

This chapter shall act as an introductmy chapter. It shall lay down the theoretical framework,

upon which the study precedes, hypothesis, objectives of the study, significance of the research,

methodology, organization of the study and the literature.

Chapter Two: Historical Developments

This chapter shall trace the historical development of Trade Mark law from its inception to the

time Uganda acquired it.

Chapter Three: Protection under the Law Applicable

This chapter shall analyze the provisions of the trade marks Act 20 I 0 pertaining to the protection

of trademarks Vis-a vic international treaties to whom Uganda is a pm1y alicr a critical analysis

of their provisions pertaining the protection of trade marks.

9
Chapter Four: The Relevance of Trade mark

This chapter will address statutory provisions of intellectual property and identify loopholes. The

writer will usc statutory provisions under the trademarks Act, case law and any other relevant

legal materials.

Chapter Five: Recommendations and Conclusions

This chapter shall make recommendation on the basis of the analysis carried out in the preceding

chapters. It's in this chapter also that a conclusion shall be drawn to the research paper based

upon the preceding analysis.

10
 CHAPTER TWO

2.0 Historical Development.

The origins and development of trademarks law cmmot be complete without a mention of

intellectual properiy protection, since trademarks are a subject there in under. Intellectual

property which in this study is discussed alongside trademark law which deals with the

provisions of the law that protects those who exercise their intellect for innovative pmposes

which reasons will be examined later on however it should be noted that a hand full of

trademarks proprietors are aware of how they could go about getting protection for the products

of their intellectual exercise let alone the forms of protection available.

In order to make a meaningful discussion concerning intellectual property prote4ction the origin

and development of intellectual property must be analyzed plus the meaning and fonns of

protection available in order to establish a basis or whatever is to be discussed vis-a-vis

Intellectual property protection.

It therefore nota~lc that this particular discussion is going to consider the problem or inadequate

legislation analyzes the remedies provided and their eiTectivcness under our socio-economic

ci [Link].

2.1 Origin and Development of Intellectual Property Protection

~"
Trademarks have existed lor almost as long as trade itself. Once human eCO)lOmies progressed to
. '

the point where a merchant classed specialized in making goods for others. The people who

made and sold clothing or pottery begun to "mark" their works with a word or symbol to identify

11
the maker such marks often !mown more than the name of the maker. Such marks have been

discovered on goods from China, India, Persia, Egypt, Rome, Greece and elsewhere and it dates

back as much as 400 years 14 .

Those early marks served several purposes lirst they wen> a ltl/'Jll of advertising allowing

markers to get their names in ti·ont of potential customers second they may have been used to

prove that the goods where sold by a particular merchant thus helping to resolve ownership

timidly the m ark served as a guarantee of quality, this functions coalesced in modem practice

where trademarks are widely viewed as devices that help to reduce infonnation and transaction
15
costs by allowing customers to estimate the nature and quality of goods before a purchase • It

should be noted that customers rely most on trademarks when it's difficult to inspect a product

quicldy and cheaply to determine its quality for example cars, computers and electronic

equipments.

The earliest traqemarks law cases reflect an awareness of need to provide a legal remedy against

counterfeiting under English common law a party who used a trademark was entitled to prevent

subsequent use of the same mark by others selling the same products or type of goods 16 •

Trademark law was relatively under developed in the early l9 1h Century. No trademark

infringement case was decided in the U.S before 1825. Joseph stmy granted the I" injunction for

Trade Mark infringement in 1844 to protect the congress provided neither guidance nor any

machinery for registration. Legal protection for designers of trademarks had to be forged in the

12
rough mills of courts intellectual prope1ty dispute its name was not valued for intellectual

reasons at all but because of mercantile and industrial application as such this prope1ty was not a

central concern of the law until the full-blown factory age 17 •

Much as intellectual property originated fi·om the Italian stats like Genoa 18 for this purpose its

pmdent to look the origin of trade marks in England because the Uganda Trade Mark2010

emanated from the repealed Act which Act was a replica of the than 1938 Trade Mark Act of

England.

During the medieval times, ce1tain segments of European commerce became centralized and

extensively controlled by various groups guides each of which controlled at least a particular
19
area of commerce a such as leather and so on these are said to be the origin of Intellectual

property protection much as it was more of commercial monopolies and had no concem for

intellectual property protection it was different from the modern day times where exclusive

rights are granted for innovative developments.

As time passed on the right to control various sectors of the market became a legal privilege

granted by the crown in return li:lr various benclits under this the nation would grant the privilege

to practice a particular art or manufacturing process to a li:lniigner who brought new technical

skills into the country.

17
!bid at pg 530 Para 1
18
A Blanco white and Robin Jacob Kenys Law of trade Marks 12'h Ed London and Maxwell1986 at Pg 2
19
Auther R Miller H. Davis Intellectual property patents trade mark and copyright in a nut shell west publishing Co.
1983 at Pg 6

13
The privilege granted would be the exclusive right to practice for gain such a skill in return the

grantee would fi-equcntly be required to train a number of citizens in the new art but the term was

for a certain period of time the rights were olien abused as the grantees sought to obtain

maximum bendits li·01n the grants by monopolizing to the <!X tent of hindering further innovators

by lh<! <!arly 17'h century the practice of royal patents had become a burden to fi·cc competition

on effect which was heightened by the gradual transition from a feudal to a mercantile economy.

The discontent with the system of royal patents revealed a need for change and indeed attempts

at changing were made for example the judiciary but this were selective and narrow effects that

did not succeed in effectively breaking up the monopolistic economic situation arising from the

system, in view of the need to check these practices and in the absence of any other suitable

method of achieving this, resort had to be made to legislative action, the English statute of

monopolies which was adopted in 1623 is one such example of legislation. This statute is said to

be the [Link] point of intellectual property law20 •

2.2The Development of Intellectual Property Law in Ugandan

The development of intellectual property specifically trade mark in Uganda can be traced way

back during the colonial era in Uganda with the introduction of the 1902 order in council

which introduced the reception clause this implied that all the laws of England could be applied

in Uganda as a result Uganda inherited most of the laws intellectual property law was no

exception this lead to the bi1th of the repealed Trademarks Act of Uganda Cap217 a replica of

the than united kingdom trademarks Act .21 The Uganda Trademarks Act Cap217 repealed was

20
Ibid at pg 2
21
Article Uganda trademarks Act new opportunities, old challenges by sebalu and lule advocates

14
based on the United Kingdom Act and was commenced on the 1'' January, 1953. However due to

the passage of time, same aspects of the trade mark become outdated, especially in light of the

present day polices, globalization and technological developments intemational obligations of

particular relevance here is the world trade organization [WTO] administered Trade Related

Aspect of Intellectnal prope1iy Rights [TRIPS] agreement of 1994. The TRIPS agreement

mandated that all member countries establish minimum standards for copyrights, patent

trademark, trade secrets, and geographical indications and have public and private remedies for

violations. The agreement establishing the WTO provides that all member states shall ensure

their laws and regulations are brought to conformity to their obligations under the development

however the Trade Marks Act Cap 217 was however not reformed despite reforms from the

original law from which it was derived.

It therefore acted as an impediment to investment due to the inadequate protection that investor

where given in case of infringement of their trademarks, large sums of money was therefore

invested in devising service and to appeal to a particular marketed hence there was therefore

need for radical changes in the law to bring it in line with the current global changcs 22 this led to

the enactment of the trademarks Bill 2008.

Following recommendations and amendment made by the committee on legal and Parliamentary

aiTairs the Trademarks Bill 2008 was passed into law now termed the Trademarks Act2010

covering loopholes that the repealed Act did not address such as registration of service marks,

concurrent use of a trademark, mandatory search requirement. And more friendly provisions to

the TRIPS agreement.

22
Report of the committee on legal and parliamentary affairs on the trademarks bill,2008

15
The Trademarks Act 20 I 0 is an act to consolidate the law relating to trademarks; to repeal and

replace the trademarks Act; to provide for the appointment or registrar; f(lr the efTect of

registration and action f(Jr infringement or a trademark, f(lr the usc and non use or a trademark,

for fees, f(lr legal proceedings and appeals, for trademark offences, f(ll" regulations and for related
OJ
matters.-

2.3 Observations

Historically modern property law including the law of intellectual property had its roots in the

pre industrial societies in Europe but owed its developments to the industrial revolution.

Similarly the war of industrial revolution in Europe did not spare Africa from its effects the fact

those most African states were colonized by the European countries Uganda inclusive were

affected as a result of the revolution through leading to the Birth and development of intellectual

propetty however despite this the development of trademark in Uganda can be said to have came

along way as evidenced in the previous discussions above

23
Trademarks Act 2010

16
 CHAPTER THREE

3.0 PROTECTION UNDER THE LAW APPLICABLE

3.1 Protection under the Uganda Trademark's Act 2010

The definition of trade mark

A Trade Mark is defined by section 1(1) of the Ace4 as follows;

"trademark means a sign or mark or combination of signs or marks capable of

being represented graphically or capable (){distinguishing goods or services of

one under taking from those of another undertaking the same section still defines

the "mark or sign" to include any word, symbol, slogan logo, sound smell, color,

brand label, name, signature letter, numerical or any combination of them ".

In Anglo Fabrics (Bolton) ltd & Another vs. African Queen Ltd &Another, 25 A trademark

was defined to mean a word, phase, symbol, product feature or any combination or these that

distinguishes in commerce the goods or services or its owner from those of others.

3.2The Development of Trademarks Law

Initially bel(Jre the coming into force of the Trade Mark Act Cap 83 and the current Trademarks

Act 20 I 0 question relating to trade mark could only come before the civil courts in the course of

proceedings in which one party was claiming relief against another. The courts were therefore

concerned to point out what must be the characteristics of the mark and circumstances of its use

by a trader which would render another trader liable for "infringement" if he used or initiated it.
24
Trade mark Act 2010 of Uganda
25
Hccm no 00017/2011

17

\
"no man is entitled to represent his as goods of another man and no man is permitted to use any

mark, sign or symbol device or means whereby without making a direct false representation

himself' to a purchaser who purchases fi·mn him he enables ~;ueh a purchase to tell a lie or to

make a false representation to somebody else who is the ultimate customer that being as it

appears to me, a comprehensive statement of what the law is upon the question of trademark or

trade designation, I am of the opinion that there is no such thing as a monopoly or propetty in the

native of copyright, or in the nature of a patent, in the use of any name always subject to this,

that he must not as I said, make directly or through the medium of another person a false

representation, that his goods are those of another person"

3.4 The Concept of a Trade mark

Section 1 (1) of the Act26 defines a mark plays a relevant role in describing fundamental features

of the mark and its relationship between the goods bearing the mark and the person who has or

claims to have the right to use it without which a mark cannot be a trademark within the meaning

of the Act. It's how ever pmdent to a read section 34 of the trademarks Act 2010 which provides

that a person may not institute proceedings to prevent or to recover damages for unregistered

trade mark. Note section 1(1) of the Act must be read in conjunction with other sections of the

Act that limit registrability of the mark.

Section 8 ofTrademarks Act 2010 provides that a Trade Mark relating to goods or services shall

be registered in respect of patticular goods or classes of goods and any question arising as to the

class within which goods or services fall shall be detennined by the registrar whose decision

shall be final according to section 8 (1) in order for a Trade Mark other than a cettification mark

26
Trade Mark Act 2010

18
to be registers in part A of the register, the Trade Mark shall contain or consist of at least one of

the following essential particulars;-

a) The name of the company, individual or firm

b) The signature of the applicant for registration or some predecessor in this business

c) An invented word or invented words

d) Award or words having no direct reference to the character or quality of the goods and

not being according to its ordinary signification of geographical name or surname.

e) Any other distinctive mark, but a name, signature or words or words other than such as

fall within the description in the foregoing paragraphs (a), (b), (c), and (d) shall not be

registrable under the provisions of this paragraph except upon evidence of its
27
distinctiveness. In Nice and Lovely Products Ltd vs. Nice & Soft Ltd ,the applicant

applied for a temporary injunction to restrain the servants and/or agents and/or

distributqrs of Nice and Soft Investments Ltd. The respondent from manufacturing,

selling or exposing for sale or in any way dealing in cosmetics using the names ''Nice &

Sol\.

Tlw applicant has been trading in cosmetics known as "Nice & Lovely" since 2003 and has

acquired a substantial reputation. In this regard, the applicant alleged that the respondents,

without any limn of authority, are selling cosmetics goods in Uganda under the mark "Nice &

Soft" and have attempted to register a trademark under the said names to the detriment of the

applicant. The applicant averred that its trademark is in danger of being wasted and ilTeparably

damaged by vi1tue of such use by the respondent who is selling inferior goods similar to those of

"Hccm no256/2011

19
the applicant. Therefore the respondent's conduct if not restrained will cause i1rcparable loss to

the applicant's trademark for damage alone cannot atone if an interim order is not issued.

Therefore the court concluded that granting the injunction would "interfere with the powers of

the Registrar of Trademarks who has statutory powers to sieve which marks may be registered in

a matter that remains pending before him or her'. This supports the position of the law.

In London overseas trading Co. Ltd Vs Raleigh Cycle Co. Limited28 the issue of contention was

whether the word "Lale" was phonetically identical to the word Raleigh and secondly whether

the mark !ale" would cause confusion. It was held by Dudley Mckisack that it was clearly the

Registrars duty to consider whether the similarity of sound was such that registration is

prohibited by S. 15 of the trade marks ordinance it was upon to the Registrar to find that the mar

by being likely..to deceive or cause confusion would be disentitled to protection in the court of

justice Dudley Micklsack stated I have no hesitation what so ever in holding with the word

"Lale" will be confused with the word "Raleigh" and that if the word "Lale'' were allowed to be

registered as a Trade Mark member of the public would be deceived into purchasing bicycles or

parts thereof with which the applicants are connected in the cause of trade when they intended

to purchase bicycles or parts thereof with which the opponents are com1ected in the cause of

trade.

The definition of a mark originates from the historical purpose of trade mark any visual

characteristic of goods or their representation, that serves the function of a Trade Mark as

defined by the Act, that serves to distinguish goods which have a particular trade c01mection

28
(1959) E. A 1012 .

20
from goods which have not carefully been described as a "mark" thus the question of whether

something is a mark usually never arises it is a "trade mark" or it is not.

In the case of Sobrefing JM29 an application to register as a Trade Mark a bottle and associated

carton of special shape was reflected not as being a "Mark" but rather because the deposited

specimens were not a representation of a mark. Refers is made to section 1 (1) of the Trade Mark

Act which defines a Trade Mark to mean a sign or mark or combination of signs or marks

capable of being represented graphically or capable of distinguishing goods or services of one

undertaking from those of another unde1taking a critical analysis of this provisions indicates that

the question of a mark is well covered under the definition of a Trade Mark as defined by the Act

2010.

Section I (2) of the Trademarks Act 2010 provides that rclcrenccs in this Act to the usc of a

mark shall be construed as reference to the usc of a printed or other visual representation of the

mark this implies that the oral usc of a Trade Mark cannot be deemed or infringement.

3.5 The Nature of a Tntdc Mark

The main function of a Trade Mark is the commercial function which is to distinguish the goods

of a finn or company, The Trademark will indicate to a customer familiar with the mark the

origin of the goods namely the source of a manufacturer or the hands through which the goods

have passed on their ways to the market. It follows therefore from the fore mention that a trade

mar·k may be used as the only means of identifYing the goods in relation to which it is used

without announcing the name of the person who is the source thereof. It also capable of

29
(1974) R.P.C 672·

21
representing a standard of quality as a commercial fact much ns the law doesn't require that any

particular standard shall be attained or maintained, when used so it serves as a sign of consistent

quality and when a customer sees goods bearing the trade mark known to him he will be induced

to buy them alternatively a customer may ask for goods beming a trademark known to him as

suitable and trustworthy.

A legal function of a trade mark is to prevent others from using the mark and thereby

appropriating the goodwill attainment to the Mark and the brand once valuable goods will have

been established by a company for a trade mark unscmpulous people will try to crash it the law

therefore enable,s the registered owners of the trade mark to prevent this by means of a11 action

for infringement30 as provided under section 34 of the Trade marks Act 2010.

In the case of Techno Telecom Ltd vs. Kigalo Investments, 31 The applicant in this case was a

duly incmporated company in Hong Kong china and the owner of registered trade mark under

the names of Techno, a manufacturer

and expo1ier of various electronics items under class 9 including Mobile phones called techno. A

registered trademark in Hong Kong the respondent Ugandan registered the same trademark. The

applicant brought a cause of action seeking the trademark to be removed from the register on

grounds of prior registration in the country of origin and non use. The decision was entered in

favor of the applicant. And techno trademark was removed from the Uganda trademarks register.

Thus a well established trade mark is a powerful means for a manufacturer or trader to attract

and retain customers and to sell his products however, with modern developments and growth of

30
Peter Meinhardt Grower Press handbook 1971 invenf1ons, patents and trade marks
31
Hccm no00017/2011

22
trade m ark law the functions of modern trademarks have expanded to include an indication of

origin, guarantee of origin and advettising device hence offeting protection to the public from

confusion as well as protection to the trade mark owner.

For a trade mark proprietor to benefit fi·om privilege accruing from the legal protect as a must his

trade mark must be registered. It s important to not there for that registration of a trade mark is a

pre-condition for enjoying the benefits or Remedies under the act

Section 34 of the trade marks 2010 is to the effect that,

"a person may not institute proceedings to prevent on to recover damages for an

ll/1 regisJered trademark therefbrejiJr WI 1111 registered trade mark therefiJre one

cannot bring w1 aclion .fiJr il?fi-ingement under the Act unless his trade mark is

registered"

However the trade mark owner if he has not registered the mark still has an option to sue under

s~.:tion 35 l(>r a common law remedy of passing off which states nothing in this Act shall be

taken to effect a might of action against a person for passing off goods on services as thee goods

or services of another on the remedies in respect of the light of action In Anglo Fabrics (Bolton)

Ltd& Another vs. African Queen ltd &Another, 32 it was stated that in order to create availed

cause of action for passing off there must be misrepresentation ;made by a trader in the cause of

trade ;to prospective consumers of his or ultimate consumers of goods of goods or services

supplied by him ;which is calculated to injure the business or good will of the trader in the sense

that its reasonably foreseeable consequences; which causes actual damage to a business or
32
HCT-00-CC-CS NO 0632/2006

23
goodwill or the trader by whom the action is brought or will probably do so. These conditions

were satisfied in the instant case and therefore the plaintiff is entitled to the reliefs sought

Section 12(1) of the Act provides for objection of registration which states that a person may

within the prescribed time from the date of publication of an application give notice to the

legislation of objection to the registration. Section 12(2) fiuiher states that the notice shall be

given in writing in the prescribed manner and shall include a statement of the grounds of

objection.

The Register too has been granted power to refuse registration of a trademark. In the case of

Coca-Cola Export corporation vs. Registrar of Trademark33 the registrar refused the

appellants application to register to word splash in part A of the trade mark register in respect of

a beverage on the ground that the word had no direct reference to the characters o quality of the

goods and therefore was not registrable under section 12 (1) d of the Trademarks ordinances

Section 47(1) of the Act provides for defensive registration of well known trademarks and any

act in line with using such a mark buy a non registered pmiy would be taken as an infringement

In case of MacDonald's Corporation vs. Joburgers Drive -in Restaurant S.A 1, 34 In this

case the respondent had appropriated to its own businesses the trade mark '' MacDonald" which

belonged to the appellant. Court held that to quality for protection it6 is enough for a claimant

to prove that the mark was well known as mark which had its origin in some foreign country

provided that as a fact , the proprietor of the mark is a person who is domiciled in on has real

and effective industrial established in the country. The protection is typical of passing off.

33
(1969) E.A 677
34
(1997) S.A I

24
Namely a prohibition on the use a mark in relation to goods and services in respect of which the

mark is well known and where its use is likely to cause deception or confusion

A mark will be well known to persons interested in goods or services to which the mark relates

to, the question is not whether as few people !mown the mark well, bnt whether a substantial

number of people known it well enough to entitle it to protection against deception or confusion

The registered owner has the excessive right to use the trade mark section 36 3 \s to the effect

that "subject to subsection 41 and 42 the registration before on offer the commencement of

this Act, of a person in pant A of the register as owner of a trademark other than a certillcation

mark in respect of any goods shall, if valid, give on be taken to have given to that person the

exclusive right to usc of the trade mark in relation to those goods ........ the light conferred by

that subsection shall be taken to be inli"inged by a person who, not being the owner of the

trademark or a registered user of the trade mark uses by way of permitted use, a mark identical

with or so nearly resembling it, as to be likely to deceive on cause confusion in the course of

trade in relation to any goods of the save description ......... "

The right of trade mark owner encompasses two things that is the light to use of the trade mark

and the right to exclude others from using the mark. The positive right of use belonging to the

trademark owner is recognized in most trade mark laws. In Anglo Fabrics (Bolton) Ltd &
36
another vs. African Queen Ltd & Another, it was stated that aright in trademark is conferred

on registration in the register of trademarks of a person as appropriator thereof.

35
Trademarks Act2010
36
HCT-00-CC-CS NO 0632/2006

25
The meaning of the right of use ought to be explained it means first the light of the owner of the

mark to affix it on her goods , containers , packaging, labels among other things or to use it is

registered, more to that the 1ight of use also means the right to introduce the goods of the

market under the trademark . This right is a continuing right and consequently appropriator can

object to acts that infi·inge that right such as the repacking o the goods bearing his mark, the

destmction of the mark on the goods on the alteration and subsequent sale of his products under

his name.

The right to use the trade mark is the trade mark's owners right to use his mark in advertising ,

on business papers , documents and so on etc.

The second general right to exclude others from using the mark follows from the marks basic

function of distinguishing the goods of its owner from those of others, That he must be able to

object to the use of confusing if similar marks in order to prevent consumers and the public in

general from being misled this is the rational of the exclusive right afforded to the trademark

owner by registration

The exclusive rights of the trademark owner can be exercised by means of an infi·ingement

action under section 34 and 79 of the Trade marie Act 2010. The trade mark is infringed if

owing to the use of an identical or similar sign for public use and the public being misled. The

test to be applied in an infringement action is narrower than in an administrative procedure. It's

not hypotheticaL test but it has to deal with the reality of inli·ingcmcnt in the market place.

26
Consequently, the court has to consider, how the infringer is actually using e trademark and the

extent of use of the infringed mark may also be significant.

Section 25(1) of the trade mark Act provides that subject to section 27, a trade mark relating to

goods shall not be registered in respect of a goods or description of goods that is identical with

on nearly resembles a trade belonging to a different owner and already on the register in respect

of;

a. The same goods

b. The same description of goods.

The above position or the law was emphasized. In this case of Techno Telecom Ltd vs. Kigalo

Invcstmcnts:' 7Thc applicant in this case was a duly incorporated company in Hong Kong china

and the owner of registered trade mark under the names or Techno, a manufacturer and expo1ter

of various electronics items under class 9 including Mobile phones called teclmo. A registered

tratkmark in I long Kong the respondent Ugandan registered the same trademark. The applicant

brought a cause of action seeking the trademark to be removed from the register on grounds of

prior registration in the country of origin and non use. The decision was entered in favor of the

applicant. The techno trademark was removed from the Uganda trademarks register.

However there is an exception to section 25(1) of the Act under section 27 which provides that

"The registrar on court may permit the registration by more than one owner in case of honest

concunent use or other special circumstances in respect of;-

a. The same goods on services

37
Hccm no00017/2011

27
 h. The same description of goods or services

c. Goods and services on descriptions of goods and services which are associated with

each other on.

d. Trade mark that are identical or nearly resemble each other subject to such conditions

and limitations as the registrar or the court may impose. This means there for that the

right to prevent registration of a similar mark is not absolute but subject and limited

to honest concuJTent use of the mark.

In Re Lyndon's 38 Trade mark person J relying on Re Worthington and co Trademark 39

held

that

"the question whether a new trademark is so like another is to be calculated by considering

whether the new mark is so like to the other o11e when they are both fairly used; that is, one is

likely to be mistaken fi'om the other regard being had to size, the material on which the mark is

to be impresses, the effects of wear and teamed other surrounding circumstances"

In the case of North Cheshire and Manchester Brewery Co Ltd. 40The applicants bought an

old brewery and without planning to deceive called it nmih Cheshire and Manchester Brewery

the judge Held that

"When I see that the name of the applicant company is literally and positively the

same name as the rival campy and that it is only prevented jrom being identical in

name by the additional of a another name; I think that the inevitable result is that one

wlzo saw the two names would arrive a/the conclusion without any doubt that the two

38
(1886) 32 Ch.D 109
"(1886) 14 Ch. D 108
40
(1989) A.C 83

28
 companies both with a well known name are the same. It's peifixtly immaterial if they

fraudulent on not''

41
In Re Worthington Co Tradema1·k James LJ was of the view that the intellection of the

legislative was to prevent a person having a trademark from being liable to injury by another

trademark which might be used to limit his or be passed off Brett LJ was of the view that it is

not only the decision that matters but how the trade make will be used in the case of trade which

may mislead the public

Section 71 of the Trademarks Act 2010 criminalizes Forging or counterfeiting trade mark.

Which states that; "any person who with intention to defi·aud t;r to enable another to defraud any

person, forges 'Or counterfeits a trade mark commits an offence and is liable on conviction to a

line not exceeding forty eight currency points or imprisonment not exceeding two years or both.

Section 72 of the Trademarks Act 2010 provides for Falsification of entries in register. where a

person makes or causes to be made a false entry in the register, a writing falsely purpmiing to be

a copy of an entry in the register, produces, tenders, causes to be produced or tendered in

evidence the writing, knowing the entry or writing to be false, he or she commits an offence and

is liable on conviction to a fine not exceeding one hundred currency points or imprisonment not

exceeding five years or both.

Section 73 of the Trademarks Act provides for falsely representing a trademark as registered.

41
Ibid 55

29
A person who makes a representation;

a) With respect to a mark not being a registered trademark, to the effect that it is a registered

trademark;

b) In respect to a prui of a registered trademark not being a part separately registered as a

trademark, to the effect that it is registered;

c) To the effect that a registered trademark is registered in respect of goods in respect of

which it is not registered; or

d) To the effect that the registration of a trademark gives an exclusive right to the owner of

the trademark to use the good in circumstances in which, having regard to limitations

entered on the register, the registration does not give that right,

Commits an offence and is liable on conviction to a fine not exceeding one hundred currency

points or imprisonment not exceeding five s or both.

Section 74 of the Trademarks Act 2010 also makes it a crime to falsifying or unlawful removal

of a registered trademark.

(I) A person who falsifies or unlawfully removes a trademark that;

(a) has been applied to goods that are being or are to be, dealt with or provided in the course of

trade; or

(b) Has been applied in relation to goods or services that arc being or arc to be, dealt with or

provided in the course of trade,

30
Knowing that the trademark is registered or reckless whether or not the trademark is registered,

commits an offence and is liable on conviction to a fine not exceeding one hundred and twenty

currency points or imprisonment not exceeding five years or both,

(2) For the purposes of subsection (I), a person falsifies a registered trademark if the person

(a) Alters or defaces it;

(b) Makes any a~dition to it; or

(c) Partly removes, crases or obliterates it,

Without the permission of the registered owner or an authorized user of the trademark, and

without being required or authorized to do so by this Act or without direction from the registrar

or an order of a court.

(3) For the purposes of subsection (I) a person unlawfully removes a registered trademark if the

person wholly removes, erases or obliterates it

(a) Without the permission of the registered owler or an authorized user of the trademark; and

(b) Without being required or authorized to do so by the Act or without a direction from the

registrar or an order of the court. Hence protecting trademark owner

Section 77 of the Trademark Act 2010 provides for selling etc goods with false marks. Which

states that?

'A person who intentionally sells goods, exposes goods for sale, has goods in his

or her possession for the pwpose of trade or manufacture, imports goods into

31
 Uganda for the pwpose of trade or manufacture or exports goods for purposes of

trade or mamifacture, knowing that or reckless whether or not'

(a) A falsified registered trademark is applied to them or in relation to them;

(h) A registered trademark has been unlawfully removed from them; or

(c) A registered trademark is falsely applied to them or in relation to them. Cmmnits an offence

and is liable on conviction to a fine not exceeding fm1y eight currency points or imprisonment

not exceeding two years or both."

Section 81 of the Trademarks Act 2010 provides for penalties and compensation. It states

that;

(1 ). In addition to any punishment imposed by the court in respect of an offence under this Act in

an action for infringement, a relief by way of damages, injunctions, account of profits or

othe1wise, shall be available to the plaintiff as in any other corresponding proceedings in respect

of infringements of other proprietary rights and in that action the com1 may give such orders as

are necessary to;

(a) Enable the plaintiff to obtain evidence of an infringement which he or she intends to adduce

at the trial;

(b) Prohibit the defendant from removing his or her assets ll·om the jurisdiction of the court or

otherwise wasting them, to the extent that those assets arc necessary to satisf'y the plaintitrs

claim if' he or she succeeds at the trial.

(:?.) In proceedings to which subsection (I) (a) applies;

32
(a) A person shall not be excused from answering a question put to that person or complying

with an order made under that subsection by reason only that to do so would tend to expose that

person or his or her spouse to criminal proceedings under this Act;

(b) A statement of admission made by a person in answer to a question put or an order made, in

accordance with that subsection is not admissible in criminal proceedings brought under this Act

against that person or his or her spouse, except that nothing in this paragraph shall render that

statement or admission inadmissible in proceedings against that person li>r peJjury or contempt

or court.

It is important to note that the above provisions discussed all protect the trade mark owner.

However, there are exceptions as discussed below;

3.2 Exceptions

Section 27 of the trade marks Act 2010 which provides for Concurrent use, states that the

registrar or court may pennit the registration by more than one owner, in a case of honest

concurrent use or other special circumstances in respect of

(a) The same goods or services;

(b) The same description of goods or services;

(c) Goods and services or descriptions of goods and services which are associated with each

other; or

(d) Trademarks that are identical or nearly resemble each other, subject to such conditions and

limitations as the registrar or the court may impose.

33
Section 31 of the trade marks Act 2010 which provides for Rights and exception of

assignment, licensing and transmission of trademarks relating to goods or services.

(I)A registered trademark relating to goods or services 1s assignable and transmissible m

c01mection with the goodwill of a business or not.

(2) A registered trademark relating to goods or services shall he assignable and transmissible in

respect of all the goods in respect of which it is registered or of some of those goods or services.

(3) Subsections (1) and (2) shall have effect in the case of an unregistered trademark used in

relation to any goods or services as they have effect in the case of a registered trademark

registered in respect of any goods or services, if at the time of the assignment or transmission of

the 1111registered trademark

(a) The mark is or was used in the same business as a registered trademark; and

(b) The mark was assigned or transmitted at the same time and to the same person as that

registered trademark and in respect of goods or services all of which are goods or services in

relation to which the unregistered trademark was used in that business and in respect of which

that registered trademark is or was assigned or transmitted.

(4) Notwithstanding subsections (!), (2) and (3), a trademark shall not be assignable or

transmissible in -a case in which as a result of an assignment or transmission there would in the

circumstances subsist whether under the common law or by registration, exclusive rights in more

than one or the persons concerned to the usc, in relation to

(a) The same goods or services;

(b) The same description or goods or services; or

34
(c) goods or services or descriptions of goods or services which are associated with each other,

of trademarks nearly resembling each other or of identical trademarks, if having regard to the

similarity of the [Link] services or the association of goods or services or descriptions of goods

or services and to the similarity of the trademarks, the use of the trademarks in exercise of those

rights, would be likely to deceive or cause confusion.

3.3 Observations and Commentary

Trademark law in general, whether federal or state protects trademark owners· commercial

identity, goodwill, reputation and investment in advertising by giving the trademark owner the

exclusive right to usc the trademark on the type of goods or services for which the owner is using

the trademark. Federal law also protects unregistered trademarks but such protection is limited to

the geographical area in which the mark is actually being used. On the basis of this discussion, it

is evident that trademark protection is available for words, names, symbols or devices that are

capable of distinguishing the owner's goods or services from the goods or services of others. A

trademark that merely describes a class of goods or services rather than distinguishing the

trademark owner's goods from goods provided by others is not protectable. For example, the

word 'comflak~s' is not protectable as a trademark for cereal because that term describes a type

of cereal that is sold by a number of cereal manufacturers rather than distinguishing one cereal

manufactw·er's goods.

In addition to the trademark protection laws discussed above, the situation in Uganda could

benefit from the link between the intellectual prope~ty system and global trade that has been

brought into sharp focus by the TRIPS Agreement to which Uganda adheres to, The Agreement

35
is binding on all members of the World Trade Organization (WTO) most of which are also

member state of the World intellectual Propetty Organization

(WIPO), as an" integral patt of the multilateral trading system established under WTO. The

modemization of intellectual prope1ty systems and the strengthening of their legislative,

administrative and enforcement infrastmctures have become policy priorities in many developing

countries, like Uganda, owing to their impending obligations under the TRIPS Agreement. In the

field of trademarks, the TRIPS Agreement contains additional obligations in particular; in

respect of the types of signs that must be eligible for protection, the registration of service marks,

minimum rights under a registration and additional protection for well known marks.

Fmthermore, the TRIPS Agreement provides for obligations to ensure that effective enforcement

of trademark rights is available to right holders and that enforcement procedures do not create

barriers to legitimate trade. These include the obligation that ce11ain remedies are available,

including injunctions, damages, and forfeiture and provisional measures, those enforcement

authorities meet cettain performance requirements and that border measures and criminal

penalties are put in place for willful trademark counterfeiting.

36
 CHAPTER FOUR

4.0 The Relevancy of Trademarks law in Uganda.

In answering the question of Relevance of trade mark law, the writer will systematically point

out and discuss some of the areas which make protection under trade mark Act20 I0 inadequate

or lacking while making comparative analysis with international agreements and where possible

look at the provision of the U.K Act. The researcher will also put lclrward the relief granted upon

a successful claim of infringement by the plaintiff and other positive aspects of protection

offered under the Act.

4.1 Areas of Inadequacy under the Act

Section 34 of the Act42 provides that a person may not institute proceedings to prevent or to

recover damage for unregistered trade marie. This means that in case of infringement a person

without evidence or proof cam1ot bring a cause of action against the infringement of the said

trade mark unless his trade mark is registered this clearly excludes the protection of non-

registered trademarks.

Infringement was explained in Anglo Fabrics (Bolton) Ltd &Another vs. African Queen Ltd
43
&Another for the principle that in a case where trademark infringement is alleged as here in

the infringement occurs when a suspected infringer uses a mark for goods or services identical or

closely related to those of the plaintiff the test of infringement is likelihood of confusion.

Likelihood of confusion is the probability that a reasonable consumer in the relevant market

42 trademarks Act 2010

43
HCT-00-CC-CS NO 0632/2006

37
will be confused or deceived and will believe the infringers goods or services come from or are

sponsored or endorsed by, the complainant or that the two are affiliated. It is important to note

therefore that the trade marks Act doesn't protect unregistered trademarks since for one to

succeed in an action for infringement of a trade mark evidence of ownership of the trade mark

must be proved this can be either a certified copy of the certificate of the trade mark can be used

to show representation of the mark, list of goods or services, the date of Registration.

Section 34 of the Act44 does not define what constitutes an infringement but rather provides for

proceedings. It therefore becomes hard for a trade mark owner to draw a line between the Acts of

infringement and non infringement since the Act has not clearly enumerated what acts amount to

infringement of a trade mark the situation is different with the U.K Trade marks Act 1994 whose

provisions are more detailed and therefore adequate for example section 7 sets forth the

excessive rights of a trade mark owner acts that constitute infringement and exception there to.

In Baume & Co. Ltd Vs MooveRomer45 L J stated where there is a likelihood of confusion the

defendant are in position of infringers of the plaintiJT trade mark unless they are entitled to

protection undc( the Act that bonafide measures honest usc by the person of his own name

without intention to make use of the good will which has been acquired by another. It is

submitted that case law is slow to give the ingredients ·or inli·ingement thereby the Act should at

least clearly state the ingredients of inti-ingemcnt of a trad'c mark if it's to be effective in

protecting trade mark owners.

44
Trademarks Act 2010
45
(1958) R.P.C 226

38
Section 12(12) Of the Act provide that where a person who gives notice of an objection or an

application who send a counter statement offer receipt of a copy of notice on an appellant does

not reside or carry on business in the East African Community, the court or the registrar may

require him or her to give security for costs of the proceedings before the court or the registrar

relating to the objection or to the appeal as the case may be and if the security is not given may

treat the objection or application or the appeal as abandoned this provision violates Article 246

of which Uganda is a patiy to which state that nationals of any country of the union shall as

regards to the protection of industrial property enjoy in all the other countries of the union the

advantages that their respective laws have grant or may therefore grant, to nationals all without

prejudice to the rights specially provided for by this convention.

Consequently they shall have the same protection as the later and the same legal remedy against

any infringement of their rights, provided that the conditions and fmmalities imposed upon

nationals are complied with therefore the requirement of fumishing security for the appellant

who doesn't r~side or cany business and therefore violates the Paris Convention for the

protection of industrial propetiy and therefore section12(12) Trademarks Act 2010 needs to be

revised since it doesn't accord equal treatment to all members.

Section 37 Act47 which provides for registration in pati A and Section 35 which also provides

for registration in pati B this seems to suggest to a common person that their two registers. The

language of the Act seems to suggest that registering a mark under pati A of the registrar gives

the trade mark a higher degree of protection and is therefore preferable to registration under pmi

"The Paris Convention for the protection of Industrial property of March 20 1883
47
Trade Marks Act 2010

39
B of the register yet that is actually no difference since both services and goods are all under

trade mark. The writer is of the view therefore that this division in the registrar is um1ecessary

and should therefore be made unifonn it's worth noting that the U.K trade marks Act !994 dealt

away with the division allowing a mark to be registered following the criteria in Section 1(1)

allowing registration of any sigh capable of distinguishing goods or services of one unde1taking

from those of another under taking.

Section 33(1) trademarks Act 2010 provides that where a person becomes entitled by

assignment on transmission to a registers trade mark he or she shall make an application to the

registrar to register him/her title and the register shall on receipt of the application and on proof

of the title to his /her satisfaction register him or her as the owner of the trade mark in respect of

the goods or services of which the assignment or transmission has effect and shall cause

particulars of the assignment or transmission to be entailed on the register.

Section 33(3) of the Act further provides that except for the purpose of an appeal under this

section or of an application under section 79 a document or instrument in respect of which no

entry has been made in the register in accordance with subsection (I) shall not be admitted in

evidence in any court in proof of the title to a trademark unless the court otherwise directs. This

means that such records arc not public and arc therefore not searchable by those who may be

interested in doing so.

The definition of'"trade mark" and mark under the trademarks Act is limited as it doesn't provide

for figurative elements. This include the trade dress that's to say its distinctive shape or packing

40
unlike the definition under article 15 of the TRIPS Agreement48 which provides that any sign or

combination of signs capable of distinguishing the goods or services of one under taking from

those of other undertaking shall be capable of constitution a trade mark such signs colures as

well as any combination of such signs, in particular words including personal names letters,

11lllllerals, Jigurative elements and combinations of signs. arc not inherently capable of

distinguishing the relevant goods or services, members may make registrability depends on

distinctiveness acquired through use, members may require as a condition of registration, that

signs be visually perceptible.

Proving infringement is not easy as there are a number of issues involved that need to be proved

this includes a ce11ified copy of the ce1tificate of the trade mark, list of goods or services the date

of registration and the name of the trade mark owner the evidence can be direct or secondary.

The documentary evidence will include sales figures, photos, and market surveys statistics or file

history of the [Link] as a must proof ownership of a trade mark, similarly of the two marks, that

the (goods or services are similar or identical as well as the fact that the public have been listed

are confused as a result trade cases don't end up in cowt because investigation is too costly in

tenns of money and time.

4.3Relief Granted

In a successful action for infringement a party may obtain an order for any of the following s

remedies given by cowi that's to say:-

48
Agreement on Trade Related Aspects of Intellectual property Rights

41
Injunction provided for under section 79(1) 49 this is a comi order restraining a person from

committing or continuing to commit infringement acts. It can either be interlocutory. The section

provides that a person whose light under this Act are in imminent danger of being infringed or

are being infi·inged may institute civil proceeding in the on to prohibit the continuation of

infringement. Therefore the plaintiff doesn't have to wait until the infringement has accounted a

long as he believes his trade mark is in imminent danger he can seek for an order of injunction to

prevent the infringement from occurring on continuous inftingement.

In Napro lndustl'ies Ltd vs. Five Star Industries Ltd & Starlite Industries,511 The applicant in

this case is a manufacturer of steel wool known as ngarisha and has been trading in the said

product in Uganda since 1990 and had acquired substantial reputation the respondents without

any form of authority registered a similar trademark namely w&arisa and stmied selling in

Uganda with very similar get up to those of the applicant so the applicants thought for an

injunction . .Judgment was entered in favor of the applicant granting an injunction to restrain the

respondent fi·om,manul(tcturing, selling or distributing or exporting l(lr sale wool under the name

Ngarisha l(lr which pending determination of the main suit.

However, this remedy lacks effectiveness because it's not very easy to enforce in practice.

Where an injunction is granted, the defendant will more often try all available avenues to dispose

of the remaining infi·ingcment stock in his possession in order to recover his costs which are not

easy for the plaintiff to know and be able to stop this is therefore a legal remedy that is

practically hard to enforce.

49
Trademarks Act 2010
50
HCMA no 773/2004

42
 In Parke Davis and co ltd vs. Opa pharmacy 51 court was of the view that since the first of

each of the parties, that is " capasolin '· for the appellant company and " Capsopa for the

respondent company were identical and there was resemblance in the containers, there was a real

possibility of confusion and the appellant was entitled to an injllnction

The remedy is further not enforced due to lack of proper co-ordination between the trademark

departments and other government departments that's to say the Uganda Revenue Authority and

customs departments and also the evil of corruption which has in filtrated may govemment

departs hence because of this, products bearing an infringing mark over offer n order for

injunction has been made.

On the other hand in the case of V.W Meyers CO. Ltd vs. L.E fields Auto services Ltd
52
infringement :;vas by mistake and there was no apparent probability of fbe defendants repeating

it. No injunction was granted and the defendants having denied the inftingement , the plaintiffs

were granted a declaration , the order reciting that I the option of the conrt the act complained of

were inadvettent.

However in Canadian case the approach was different in Compagnie General Michelin vs.
53
National Auto mobile Workers Union. The Plaintiff Michelin held a trade mark in a

beaming marshmallow like figure composed attempted to unionize the employees of Michelin

Canadians putting leaflets displaying posters and issued infonnation sheets that produced the

tenn Michelin and the bidendum design with its pennission Michelin he south a permanent

injunction comt found that C.A.W had not used the trade marks in relation to goods on services

51
(1961) E. A 556
52
(1954) 71 R.P.C 438
53
(1997) 2 F.C 306

43
and proceeded to hold that the plaintiff failed o prove use under section 20 of the Canadian Act

which requires proof of use of a mark on trade mark

It's imp01tant to note that the defendant has no defense to an order seeking an injunction in the

case of infi·ingement the fact the plaintiff can show some treat on probation any that the

infringement will be commenced, repeated on continued is enough to grant o order of injunction

to a trade mark owner

Damages under section 79 (4i4,this is a reward awarded to an aggiieved party in lieu of the

damages caused to the defendant in this context the trademark owner Section 79 (4) Trade

mark Act 2010 provides that a person who sustains any damages because of the infringement of

his or her right under this Act may claim damages against the person responsible for the

infl·ingement whether or that person has been successfully prosecuted .It connotes therefore that

the natural cons<?_quences of an infi·ingement even though it be made in complete ignorance of the

plaintiiTrights is that the infringer must pay at least nominal damages and the cost of action.

However, if the plaintiff claims substantial damages, the onus of showing of the loss he has

actually sustained by reason of the defendants conduct lies on him. It will not be presumed, in

the absence of evidence that the amount of goods sold by the defendant under the infringing

trademark would, but for the defendants' unlawful use of the plaintiffs mark have been sold by

the plaintiff. Its good remedy parse however some trade mark proprietor do not keep accurate

records of their sales for fear of paying high taxes, meaning the damages have to be computed

54
Trademarks Act

44
using false ligures entered in the records yet they don't represent the true picture o[ sales hence

the proprietor is responsible for such loss

55
In the case or VIP Tours and Travel Ltd vs. Sl\1 Rove1·s and Travel Ltd this involved a

mark designed by an employee of the plaintiff who set up the defendant competing business

having Iell the plaintiff employment it was Held that the Defendant service mark was similar to

the plaintiffs and therefore infringed the plaintiffs mark the plaintiff was there foe entitled to

damages

Delivery up of the infringing goods. This is where court orders the accused person to deliver

the infringing article to either the trademark owner or comi Section 79(2) 56 provides that upon

on expe1i application by a might owner; the court may in chambers make an order for the

inspectors of o.r removal from the right infringing materials, which constitute evidence of

infringement by that person

57
In the case of Slazenge1· v Felltham the plaintiff mark was stamped on the defendant's racket

with the word 'Demotic'. It was held that the defendant swears an affidavit stmiing the number

of rackets and either deliver them to the plaintiff on erase the word ''demotic '' in the immediate

presence of the plaintiff.

58
Additionally, in Dupark Emporium vs. Bond it was held that the owner of the trade mark is

entitled to damages and an order of delivery up of the infringing articles to court for destruction.

55
(1988- 90) H.C.B 97
56
Trademarks Act 2010
57
(1889) R.P.C 551
58
(1973) E. A 553

45
It was therefore upon this premise that she vested her order for inqnily to be made as to the

damages suffered by the plaintiff on account of profit made by the defendant.

Besides the civil remedies granted to a trade mark owner under Section 79 of the Trademark

Act 2010, there are also other provisions that put measure to prevent trade mark infiingement

and they include the following:

Section 25 (1) of the trademarks Act 2010 provides that subject to section 27 a trademark

relating to goods shall not be registered in respect of goods on description of goods that is

identical with or nearly resembles a trademark of the register in respect of the

a. The same goods

b. The same description of goods; or

c. Services ,or decision of services which are associated with those goods or goods of that

description

Subsection 2 of the same provided for not registering a trade marks relating to service that are

identical in nature.

However in order to successlully rely on this provision the question of a likelihood of confusion

must be in contention. In the case ofBerlei Herstai industries Vs the Berleys co/ 9 it was held.

The fact that the two trade marks were phonetically similar could lead to deception even though

at present the marks were used in distinguishable products. The question whether there is a

Iikelihood of confusion is to be answered not in reference to the mmmer in which the respondent

has used his name in the past by reference to the user to which it can properly put the mark.

59
(1973) 129 CLR 353

46
Th~ sam~ principle was emphasized in Coca Cola vs. All Feet''" the appellant had built a

substantial good will and reputation in connection with the usc or respondent imported and sold

confcctionary including a Cola flavored sweet which had a shape of a contour bottle but

elongated with the word ''Cola" marked on it. The appellant contended that the use of the

contour bottle was to indicate a connection to coca cola and the respondents had taken the idea of

a coke mark the court of appeal held that customers may well be confused to the extent that they

might wonder whether the confectionary came from coca cola, because customers have

imperfect recollections of exact shapes of bottles marks and a deceptive mark can suggest a

similarity which can cause confusion in the limits of consumers."

However, there are exceptions to section 25(1) of the Act under Section 27 concunent use of the

mark is reasonably necessary to indicate that the goods form part of or are accessory to other

goods in relation to which they mark has been used without infringement and also if it is one of

two or have registered trademarks that are identical or nearly resemble each other in exercise of

the right to the use of that mark given by registration.

In Re-Lyndon's trade mark61 where Peansons J. relying on Re-Worthington and Co. trade

mark62 held that "the question whether a new trade mark is so like another is to be calculated by

considering whether the new mark is so like the other one when they are both fairly used that is

one is likely to be mistaken for the other regard being hard to size, the materials on which the

mark is to be impressed, the effects of wear and tear and other surrounding circumstances.

60
(1999) IPR 47
61
(1886) 32 CH. D 109
62
(1886) 14 CH.D 8.

47
Another form of protection of trade in one accorded to well known trademarks found under

section 47 (1) of the Act which states where a trade mark relating to goods or services and

consisting of an invented word or a device or devices or a combination of them, has become so

exceptionary well known in respects to goods or services in which it is registered and in

relation to which it has been used that the use of that trade mark in relation to other goods or to

services on both is likely to detract from its distinctive character in respect of the goods or

services then not withstanding can register it.

In Mac Donald's Corporation Vs Joburgers Drive in Restaurants 63 the respondent had

appropriated to its own business the trade mark "Mac Donald's" which belonged to the appellant

court held that to qualify for protection it is enough for the claimant to prove that the mark was

well known as ! mark which had its origin in some foreign country provided as a fact the

proprietor of the mark is a person who is dominated in or has real and effective industrial

eslnblishmenl in the country

It should be noted that well known marks even if not registered in Uganda can be protected as

per article 6(i) B is 6• the Paris convention for the protection of industrial property of 1883

which states the countries or the union undertake ex officio if their legislation so permits or at the

request of an interested party to refuse or to cancel the registration and to prohibit the use of a

trade mark which constitutes a reproduction or limitation, or a translation liable to create

confusion or a mark considered by a competent Authority of the country of registration or use to

be well known in that country as being already the mark fa person used for identical or similar

63
(1997) S.A I
64
The Paris Conveotion for the protection of Industrial property of 1883

48
goods therefore Uganda being a party to this convention its binding upon it. this was evidenced

In the case of Techno Telecom ltd vs. Kigalo Investments. The applicant in this case was a
65
duly incorporated company in Hong Kong china and the owner of registered trade mark under

the names of Techno, a manufacturer and exporter of various electronics items under class 9

including Mo bile phones called techno. A registered trademark in Hong Kong the respondent

Ugandan registered the same trademark. The applicant brought a cause of action seeking the

trademark to be removed from the register on grounds of prior registration in the country of

origin and non use. The decision was entered in favor of the applicant. And techno trademark

was removed from the Uganda trademarks register much as the trademark was not registered in

Uganda

Furthermore Uganda being a member of the I trade organization , its bound by the

agreement on trade related aspects of intellectual property rights TRIPS 1994 which provisions

from 15 -21 which provide for trademarks as well as well known marks being protected in

member countries even if they are not registered well known trademarks include Shell

4.3 Observation and Commentary

The 20 I 0 trademarks Act is rich with provisions that protects the trademark owner against

infringement and it has also some of the provisions of the TRIPS Agreement of 1994 and the

Paris convention for the protection of industrial property of 1883 however there is still some

loopholes for example the enforcement mechanism of the relief granted is not reliable lock of

condemnation , conuption at the administration level therefore for the Act to attain its main

65
Hccm no00017/2011

49
objective of protecting trade mark owner there IS a need to address this loopholes and put

realistic enforcement mechanism.

50
 CHAPTER FIVE

5.0 RECOMMENDATIONS AND CONCLUSION

In the preceding chapter, the writer makes a critical analysis of the provisions offering the

protection of trademarks under the Uganda the Trademarks Act 2010. The Chapter also lays out

the limitations JO trademark protection under the Act. Subsequently we intend to look at the

prevailing circumstances which may demand for stronger [Link] of trademarks through

extending the legal protection and removing the existing bmTiers.

As a result of this situation, it is imperative that the avenues open to Uganda in reaction to the

demands be analyzed and knows what form of protection should be established for the trademark

proprietor to benefit fully.

5.1 Observations

On the whole, the Uganda Trademarks Act 2010 is a very useful and important legislation in

protecting trademarks as well as regulating their use and it's to a greater extent protecting trade

mark owners.

A look at recent trends in some developing countries regarding the subject of trademark

protection is quite revealing. Most of these countries like U.S and U.K have established the

process of protection and the fact that almost all these countries have attained a level of

development that places them in a class above the developing countries like Uganda for example

implies that even the latter countries cannot remain without such 'protection for long.

51
The Act should provide equal treatment to all trademark owners both local and foreign when it

comes to registrations; Although Uganda is a Member of the International Convention, also

known as the Paris Convention. It has not yet accorded priority rights to other convention

member countries.

Under the Intemational Convention, member countries provide equal treatment of the nationals

and residents of other convention member countries.

5.2 Recommendations and Possible Options for According Better Trademark Protection

The possible options and recommendations shall be divided in the following:-

5.2.1 The law

Firstly, the Act should clarity that the assignment records arc publicly available and searchable,

It is important to provide a system of recording titles of trademark registrations as well as any

documents afl"ccting title, such as changes of name, security interests and so on. The assignment

records should be publicly available so that the title of a registered mark is easily asceJiainable.

This is particularly important where investors arc determining whether to license or purchase a

trademark. Therefore, Section of the Act, which provides for registration of assignments and

transmissions with the Registrar, should be amended to clarify that the assignment records are

publicly available and searchable.

Furthermore it is recommended that references to Part A and B of the register should be removed

so that there will be a single trademark register. The U.K legislation has done away with this

distinction and register has been unified. This is a positive development which should be adopted

in Uganda.

52
The punishment imposed on the trade mark infringers throughout the act from section 71 - 74

have a lighter punishment meaning the pcrpetuators of these acts of infi·ingements commit the

acts knowing that the pnnishment is light so there is a need to impose more serious heavier

punishments for trade mark infringers in order to deter them fi·om continuous commission of

infringement acts.

5.2.2 Institutional Framework

There is need to improve on the coordination between the Trademark depa;-tment and other

government departments especially Uganda Revenue Authority and the departments there under

such as customs, so that infringing products are withheld from either leaving or entering the

cow1try. Probably as more punishment to the infringers such goods should be imposed.

Institutional set up of the intellectual property office is one way of improving trade mark law this

will help in order to better domestic research institutions with the country's intellectual prope11y

administration the govenunent should consider the establishment of national intellectual prope11y

office staffed with inter alia, technical experts capable of extracting information for trademark

applications from all the applicants in addition to the legal and administrative staff for the
\ .
intellectual property registration procedures.

There is need for govenunent to put in an effort to fight the evil of corruption is the new law is to

achieve its goals this is because through corrupt in officials infi·inging articles of registered

trademarks can still enter the market and compete with bonafide trademark owners at the

expense of the genuine trade mark products.

53
5.2.3 Social

The public should be educated about the advantages of the new law on trade mark the trademark

Act 20 I 0 the reason being you cannot enforce your rights when you don't know any. The

education can be through the media like televisions, Radio stations, and News papers such that

the public gets to have know about trademarks not to mention the Trademarks Act 2010 in this

way the public can benefit from the main objective of the trademark law.

In a nut-shell the trade marks Act 20 I 0 is a fundamental instrument in protecting trademark

owners and also in line with international treaties such as the TRIPS agreement however there is

need to implement the resolutions stated above il'the Act is to attain positive results.

54
 REFERENCES

1. A Blanco white and Robin Jacob Kenly's Law of trademarks 12'11 Ed

London and Maxwelll986.

2. Patents, Copyrights & trademark an intellectual property Desk reference by

Attorney Richard Stirn 2006.

3. L. W . Melville, precedents on Intellectual property and international

licensing 2"ct Ed.

4. Merges, Merrell, Temley Intellectual property in the new technological Age

3rd Edition.

5. Auther R Miller H. Davis Intellectual prope1iy, patents, trademark and

copyright in a nut shell west publishing Co. 1983.

6. (TRIPS), Agreement on Trade Related Aspects of Intellectual property

Rights,

7. The Paris Convention for the protection of Industrial property of 1883.

8. A Report of the committee on legal and parliamentary affairs on the

trademarks bill, 2008

9. Article Uganda trademarks Act new opportunities, old challenges by sebalu

and lule advocates.

10. A Report by the United Nations Conference on Trade and Development.

55