What is in a trademark?

Logos, sounds, slogans, scents, numbers, designs and words have built the identity of many Ugandan businesses for years. There are 800,000 businesses registered by Uganda Registration Services Bureau (URSB) today. Records at URSB show over 2,000 local trademarks are registered every year. But when products come to the market with similar symbols, businesses will defend their right to use their trademarks.

Trademark wars
In the year 2012, a sweetened carbonated soft drink with a cola flavour hit the Ugandan market. While this drink, Riham Cola, gained traction among soda lovers, a law suit emerged.

Daily Monitor, in 2015, reported that Coca Cola through its East Africa corporate and government relations manager faulted Hariss International for trademark infringement. Riham Cola and Fun Time, Harris International’s products, were reported to have distinct features similar to those of some Coca Cola brands. Coca Cola said it had alerted Harris International which seemed undeterred. Left without another remedy, it sought redress in court.

In November 2013, the case was settled out of court. Daily Monitor reports the trademark infringement case had, however, scarred Harris International as it invested in modifying its products’ look.

In 2015, Mandela Auto Spares Limited’s Café Javas and Nairobi Java House Limited were embroiled in a trademark war after the latter’s expansion into Uganda. The registrar of Trademarks ruled in favour of Mandela Auto Spares Limited, refusing the application for registration of Java House.

The Kenyan coffee House appealed the ruling in the High Court of Uganda. Ten months later, Justice Christopher Madrama Izama set aside the Registrar’s decision, allowing Java House to register its trademark. In his judgment, he stated that the Registrar failed to find that there was no similarity between Java House and Café Javas as trademarks.

Snapback Central Limited is one of the most recent to take on people in a trademark battle. In a span of three years, the local company that designs T-shirts, caps, back packs and hoodies has after tipoffs from customers and convincing investigations, dragged some Kikuubo traders to court for infringing on its trademark, KLA.

“I registered the trademark in 2016. But traders in Kikuubo get my logo, make copies of the fashion ware without my permission. They easily target my caps because they are easier to infringe on. I arrested traders downtown in 2017 and another in 2019,” Snapback’s director (who prefers anonymity) said in an interview.

This contest is one of the 60 complaints received by URSB’s intellectual property enforcement unit manned by police since April last year.

Trademark
But what is in a trademark that pits businesses against each other?
Without a trademark, your consumers will never find you, according to URSB manager Intellectual Property, Gilbert Agaba.
Trademarks distinguish products in a market. They embody emotional attributes consumers attach to a product, from safety, aspirations to lifestyles. At their best, they minimise confusion in the market. But also, like land or any other property, they can be vended.

“Consumers buy products they can easily identify,” Mr Agaba, says.

“It is the one thing that gives you competitive edge if you are in business. If you are selling something, consumers are buying the product while you are selling a brand. So without a trademark, you are not going to get market.”

A business’ trademarks must be protected through registration with URSB in Uganda. The cost for a trademark in Uganda is Shs175,000. This excludes the fees paid to publish a notice in the gazette for 60 days. If a business wants protection in another country, it has to go to those countries and put in an application.

“The first time, registration is for seven years and you can renew it every 10 years. When your trademark is registered, you have the right to exclusively use it. No one can use the mark without your authorisation. Any other person who uses that mark, without your permission will be infringing,” Mr Agaba says.

The infringing mark can be identical with or nearly resembles another trademark. As long as the public is deceived into believing that the source of these two marks is the same person, there will be trademark infringement.

Impact on enterprises
While infringing businesses walk away with profits, their victims are left injured. Snapback Central Limited director says the infringing products he found in Kikuubo were cheaper than his and of poor quality.

For the businessperson who has been trying to build a fashion brand, it sometimes feels like working backwards.
“Building a brand is expensive as it involves a lot of marketing. Being a fashion brand, it is still a budding business in the economy. As you are trying to initiate a market for a product, some people are developing products using your logo. Something of good value cannot be cheap and of poor quality,” the director says.

But the director attests to the costly process of catching the culprits.
“You have to pay a lot of money to get them. I cannot tell you the amount but know it is a big figure,” he says.

What the law says
Section 25 of The Trademarks Act 2010 prohibits registration of identical and resembling marks. It reads, “Subject to section 27, a trademark relating to goods shall not be registered in respect of goods or description of goods that is identical with or nearly resembles a trademark belonging to a different owner and already on the register in respect of— the same goods, the same description of goods or services or a description of services which are associated with those goods of description. The same law applies to a trademark relating to services.

Civil and criminal processes make up remedies of a battle between businesses over infringement.
The business can file a suit in court and it will award injunctions, damages or destruction of infringing goods.

PROTECTING YOUR TRADEMARK
A business’ trademarks must be protected through registration with URSB in Uganda. The cost for a trademark in Uganda is Shs175,000. This excludes the fees paid to publish a notice in the gazette for 60 days. If a business wants protection in another country, it has to go to those countries and put in an application.

“The first time, registration is for seven years and you can renew it every 10 years. When your trademark is registered, you have the right to exclusively use it. No one can use the mark without your authorisation. Any other person who uses that mark, without your permission will be infringing,” Mr Agaba says.

The infringing mark can be identical with or nearly resembles another trademark. As long as the public is deceived into believing that the source of these two marks is the same person, there will be trademark infringement.

WHAT IS A TRADEMARK?
World Intellectual Property Organisation defines a trademark as a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It must be distinctive and not misleading. Trademarks are protected by intellectual property rights and may take many different forms - words, letters, numbers, drawings, symbols or even audible sounds.

Trademarks may be names, logos or drawings that are shown on a product, package, label or company building.
Trademarks offer protection and also help people identify the source of goods or services.

Before your trademark is legally registered, provided it is distinctive and not misleading, you may use the symbol ™ to lay claim to your specific trademark. Once your trademark is legally registered with the Uganda Registration Services Bureau (URSB), you gain exclusive rights over it.

It is a strong form of legal protection that allows you to build a customer base without worrying about similarly named competitor products confusing customers and drawing them away. Once your trademark is registered, you may take legal action against anyone who uses it without your permission, for example, counterfeiters.

Trademark counterfeiting
Where an unregistered person uses a similar or resembling mark as that which is registered in a manner to deceive the public that the goods originate from the same business, a crime is registered.

Technically, it is referred to as trademark counterfeiting. “Unless your mark is registered, there is no counterfeiting so you cannot complain. You make a complaint to Registrar General, indicate who you suspect of counterfeiting. Police will investigate the matter and where necessary, they will seize the infringing products and support prosecution of the offender,” Mr Agaba explains.

With 60 complaints from businesses defending their rights to use trademarks in the last ten months, URSB records show it has seized infringing products worth Shs10b.

Commenting on whether businesses are infringing on trademarks out of unawareness, Mr Agaba says ignorance of the law is no defence. That said, he pointed out the significance of knowledge between both businesses and consumers, especially for the latter for their own safety.

“Consumers should be able to distinguish between the two products. Also, sometimes the person counterfeiting is not aware and it is not like we bring down the hammer when we suspect an offence. We encourage parties to notify them of their act to cease what they are doing but that is the initiative of the parties not URSB,” Mr Agaba says.