UNLOCKING INTELLECTUAL PROPERTY: A CONCISE STUDY GUIDE

Dec 21, 2023

What is Copyright ?

Copyright is a set of rights that protect original creative works once they're made tangible (like written down or recorded). It gives the creator the right to make or allow others to make copies of things like art, plays, books, and music. - Black's Law Dictionary / Sylvia Katende v Bank of Uganda

Statutory right that protects - literary, artistic, and Scientific works

In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Cn 601 - Justice Perterson stated that Copyright seeks to protect expression of thought and not ideas themselves - he said “ What is worth copying is worth protecting ” / S.6 Copyright and Neighboring Rights Act 2006

(CRNA)

LAWS APPLICABLE

The TRIPPS (Trade-Related Aspects of Intellectual Property Rights)- Article 3 of the Tripps provides for the Principle of National Treatment
Article 3 and 4 of the TRIPS Agreement provide the following: Article 3 of the TRIPS Agreement- each member to accord to the nationals of other members treatment no less favorable than that it accords to its own nationals with regard to the protection of intellectual property.
Article 4 of the TRIPS Agreement - requires that any advantage, favor, privilege, or immunity granted by a member to the nationals of any other country with regard to the protection of intellectual property shall be accorded immediately and unconditionally to the nationals of all other members, subject to certain exceptions.

The Berne Convention - Art 1- 21

The Berne Convention for the Protection of Literary and Artistic Works is an international agreement that sets out the basic principles of copyright law. Here is a summary of Articles 1-21 of the Berne Convention:
Article 1: Establishment of a Union
Article 2: Protected Works
Article 3: Application of the Convention
Article 4: Formalities
Article 5: Rights Granted
Article 6: Possible Limitations of Protection Article 7: Duration of Protection
Article 8: Termination of Protection
Article 9: Right of Reproduction
Article 10: Certain Free Uses of Works
Article 11: Certain Rights in Dramatic and Musical Works
Article 12: Right to Make Collections of Works
Article 13: Authors of Anonymous and Pseudonymous Works
Article 14: Cinematographic and Other Audiovisual Works
Article 15: Works Published Without Mention of the Author's Name or Pseudonym
Article 16: Works of Architecture
Article 17: Works of Applied Art
Article 18: Obligations Concerning Technical Measures
Article 19: Protection Greater than Resulting from Convention
Article 20: Special Agreements Among Countries of the Union
Article 21: Special Provisions Regarding Developing Countries

The Constitution of Uganda

Article 26 of the 1995 Constitution Every Ugandan has a right to own property among which is intellectual property

The Copyright and Neighbouring Act under its long title seeks to provide statutory protection for literary , scientific intellectual works

Examples of Copyrightable material- Sec 5 CNRA

1. Songs/dramatic music - Garfield Spence / Konshens v Airtel Uganda Obsessions v Warid Telecom

2. Movies but not there titles / Drama’s Tate v Fullbrok

3. Books / articles/books/pamphlets Classic Art works Ltd v Vicent Lukenge

4. Labels of Products

5. Software Digital Solutions Ltd v MTN Uganda

6. Derivative works Prof Mwabusya v YK Museveni, Hajjat Hadijah & Ors v Frank Gashumba

S.4 of CNRA for work to attain copyright the work must form part of the subject mattered the protections of copyright ie it must pass the tests of copyright protection

Elements of Copyright

1. AUTHORSHIP

Section 2 of the CNRA - An author means the person who created / creates work that is eligible to be copyrighted University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Cn 601- the University of London was held to be the authors of the paper

In Naruto v Slater - it was held that a monkey couldn’t be an author because it was not a human being

In the case of Thaler v. Shira Permuter, Stephen Thaler filed a complaint in the D.C. District Court against the United States Copyright Office and its director requesting the refusal of his AI-generated artwork be set aside and the artwork be registered.

Thaler filed a motion for summary judgment arguing that AI-generated work is copyrightable because the Copyright Act provides protection to “original works of authorship.” This argument was premised on Thaler’s assertion that “author” is not explicitly defined in the Copyright Act and that the ordinary meaning of “author” encompasses generative AI. However, the D.C. District Court disagreed and held that the Copyright Act plainly requires human authorship. The court affirmed the Copyright Office’s denial of Thaler’s application, holding that “human authorship is an essential part of a valid copyright claim.” Section 101 of the Copyright Act requires that a work have an “author” in order to be eligible for copyright. The court concluded that the author must be human, for three primary reasons. Therefore, the court ruled that AI-generated works cannot be copyrighted

ORIGINALITY

S.4(2) CNRA- it must be Original

S.4(3) CNRA - This means it’s the independent work of the author In the case of Ladbroke Football Ltd v William Hill Football Ltd, the court held that the "fixed odd" football coupons created by William Hill were copyright-protected "original" compilations and that Ladbroke had infringed on the copyright. The court rejected Ladbroke's argument that the coupons were not original and therefore not protected by copyright. The court found that the coupons were the result of a "vast amount of skill, judgement, experience and work" and that they were not merely a collection of facts. The case established that originality is a requirement for copyright protection and that copyright protection depends on originality to maintain the incentive for authors to create new works.

In Sylvia Nabiteeko Katende v Bank of Uganda.

Facts: The plaintiff, Sylvia Nabiteeko Katende, participated in and won a competition organized by Kampala City Council (KCC) and created a sculpture as part of her prize. She later discovered that the sculpture had been used by the Bank of Uganda without her permission.

Issues: The plaintiff brought a suit against the defendant, contending that the sculpture was built by Prof. Ssengendo without her knowledge or consent, and that the Bank of Uganda had infringed her copyright by using the sculpture without her permission.

Holding: The High Court passed a judgment on infringement of copyright, fair use, and damages under copyright infringement. The court found that the sculpture was the original work of the plaintiff, and that the Bank of Uganda had infringed her copyright by using the sculpture without her permission. The court awarded the plaintiff damages of UGX 50 million

In Sawkins v Hyperion Music Records- Mr Sawkins was held to be the original author of the music as he put in his independent efforts and skills in rehearsing the music

3.MATERIAL FORM

S.4(1) CNRA it must be reduced in material form

S.6 CNRA highlights the principle of ideas should be reduced in material form so as acquire copyright and that ideas are not protected .Originality of work happens at the point of fixation of work however reducing work into material form is not sufficient enough but registration is necessary

Alhaji Nasser Ntege Ssebagalla v MTN U Ltd HCCS no.283 - 2012- Court held that a conversation did not amount to a literary work because it wasn’t expressed in material form

4.ELIGIBILITY

All works under S.5 fall under either Literary and Scientific / artistic works

Original works reduced into material form whatever method irespective of the quality fall under the following categories

A) Literary works

B) Artistic works

C) Scientific works

LITERARY WORKS

S.5 (a) of the CRNA - articles , books ,pamphlets ,lectures addresses, sermons and other works of similar nature fall under Literary works .They are all fixated / put into material form by writing.

In James Park v East African Educational Publishers Court held the plaintiff had copyright in his books that is “literary work” and that the defendant was absolutely liable for failing to give him to give him royalties for his publications DRAMATIC & MUSICAL WORKS

For dramatic works the mode of fixation is by showcasing it. Tate v Fullbrook

1 The Lyrics of the Song

2. The Melody of the Song

3. The Recording of the Song ie Sound recording and the visual compilation

A Song may consist of Literary and Musical Works the Lyrics being the Literal works

The Artist - Performing Rights / Neighboring rights

The Lyricist -

Producer Look at Garfield spence v Airtel

In UB40 v Alex Campbell , court held that Alex campbell a former member of the UB40 band couldn’t hold out as a UB40 member as he forfieted out of the band and assigned his rights and couldn’t play songs of the band

SPEECHES, SOUND RECORDINGS, FILMS & BROADCASTS 1. Speeches & Sounds.

A speech is a spoken presentation or address given to an audience. In the context of copyright law, speeches are considered literary works and are protected as such. The author of the speech is the first owner of the copyright, and the speech is protected for the author's lifetime plus 50 years after their death.

For a Speech to be Protected it must be fixated into Material Form - In the Estate of Martin Luther King v CBS Inc Court vested copyright in Dr. Kings speech because it was placed in material form Sound recordings of speeches are also protected under copyright law as a separate category of works. The author of the sound recording is the first owner of the copyright, and the sound recording is protected for 50 years from the end of the year in which it was made.- In Alhaji Nasser Ntege Ssebagalla v MTN Uganda & SMS - Alhaji Nassers sound recordings didn’t enjoy copyright because they were never put into material form Films / Movies

Films are protected under copyright law as cinematograph pictures. The author of the film is the first owner of the copyright, and the film is protected for 50 years from the end of the year in which it was made-

Copyright Infringement in Movies / Films occurs When someone reproduces, distributes or display the copyrighted movie without obtaining the proper permission from the copyright owner, then it comes under the movie copyright infringement.

Copyright law will safeguard the intellectual property rights of the copyright owners. These exclusive rights will also control how to utilize the works and gain from it. Infringement can occur in various ways, including but not limited to:

Copying or sharing of a copyrighted movie, which could involve making physical copies, downloading or uploading it online, or sharing via peer-to-peer networks.
Publicly displaying or broadcasting a copyrighted movie without the appropriate license or permission, such as in a public space, on a website, or through social media
Creating derivative works based on a copyrighted movie, like a remake, adaptation, or parody, without obtaining the necessary rights or permissions from the copyright holder.

In Horizon Comics Productions v. Marvel Entertainment LLC. In this case, Horizon Comics Productions sued Marvel in 2016, claiming that the movie poster for "Iron Man 3" copied the design of their comic book character Caliban. However, in 2019, the judge ruled in favor of Marvel, stating that Horizon failed to demonstrate that the images were "strikingly similar," and that Marvel produced evidence of independent creation of the poster.

Artistic Works - Stella Atal v Kiruta - in this case it was held that artistic works can be regarded as copyrightable material.

Broadcasts of sound recordings are protected by a separate category. For example, when a speech is broadcast on the radio, the speech is protected as a sound recording, but an additional and separate copyright is created in the broadcast.- Multi choice v Jamil telecom & Safaricom

COPYRIGHT IN FITICIOUS CHARACTERS

The Rocky movie copyright case is a well-known example of a case where copyright protection was granted to fictional characters. In the case of Anderson v. Stallone, the court found that the characters from the original Rocky movies were afforded copyright protection. The court found that the boxer Rocky Balboa from the Rocky film series was a copyrightable character

Elements for Copyright to vest in a Fiticious character

1. The Character must be Important

2. The Character constitutes the story being told

3. Character is well defined

Works Excluded From Copyright

Section 6 of the Copyright and Neighbouring Rights Act of 2006- in Uganda states that ideas are not protected by copyright. Copyright protection only applies to the expression of ideas in a material form. This means that copyright does not protect the idea itself, but rather the way in which the idea is expressed. - University of London v University of Tutorial Press

Section 7 of the Act states that works that are in the public eg Acts, News of the day and Statutes are not protected by copyright. .- British Broadcasting Corpration v British Satalite Broadcasting Limited one cant copyright news of the day

Section 8 of the Act deals with employed authors and works of government. It specifies that where a work is made by an employee in the course of their employment, the employer is the first owner of the copyright in the work. However, where a work is made by an employee under a contract of service or apprenticeship and the work is not made in the course of their employment, the employee is the first owner of the copyright in the work. The section also specifies that copyright in a work made by or under the direction or control of the government belongs to the government

Commissioned works by Government - Prof George Kakoma v Attorney General- the case provides for work to be commissioned works the following elements must be as follows;

1. There must be consideration

2. The parties must have intention

3. The parties must have capacity to contract

4. The agreement must comply with any formal legal requirements required for creation of a valid contract

Works made in Course of Employment

Courts will tend to look at the Control and direction to determine who has the copyright

The employee shall only remain with a Moral right

Stevenson, Jordan & Harrison Ltd v MacDonald and Evans

Facts: A management engineer wrote a book using information he gained while working for his firm, first as an employee, and then as an executive officer. Some of the information was from the text of lectures that he wrote and delivered, and some was material he acquired while on an assignment.The engineer died before publication.

Issues: Whether the person was considered to be an employee under a “contract of service” for the purposes of allotting copyright to the employer.

Whether the employer owned the copyright of the book.

Holding:- The Copyright Act 1911 section 5(1) granted first copyright to the author of a work, unless they were an employee and made the work in the course of their employment. “If the author was under a contract of employment and the work was in the course of employment, the employer would own the copyright in the absence of another agreement.”

The engineer simply put together his know-how of the profession and had not betrayed any mystery of the firm’s business or disclosed trade secrets. His contract was mixed, partly of and partly for services outside the contract. His lecture work was not covered by the Act, but the material acquired while on assignment did fall within the Act. The publishers should be restrained from printing that section, which was severable.

TYPES OF RIGHTS UNDER COPYRIGHT

1. Neighbouring rights- these are rights related to copyright attached to the auxiliary role played by Performers - Sikuku Agaitano v Uganda Batti

Producers of sound

Broadcasting Companies .The auxilary role is dependent on the work of the author /owner - S.21 CNRA

2. Economic Rights

These are rights that allow the owners of copyright to derive a financial reward from the use of their works by others - S.9 CNRA

In Professor George Kakoma v Attorney General

3. Moral Rights

These are rights that allow authours and creators to take certain actions to preserve and protect there work it entails acknowledment in use, Objection to distorttion and dillution - S.2 CNRA , S.10 CNRA - A moral right shall have a right to atribution and a right to integrity

Moral rights are not assignable.

Moral rights exist in perpetuity Angella Katatumba v ACCA

DURATION OF COPYRIGHT

S.13 CNRA - For an Individual- Lifetime of the author and 50 years after the death

For a Legal Entity- 50 years from the date of the first publication of work

For computer programs - 50 years from the date of making the program public

Audiovisual - 50 years from the making of

Performers - 50 years from the date of performance

CO AUTHOURSHIP

Co-authorship refers to a situation where two or more people contribute to the creation of a single work. Section 11 of the Act provides that where a work is created by two or more authors, the authors are co-owners of the copyright in the work. Each co-owner has an equal right to exploit the work, subject to the rights of the other co-owners. Co-ownership of copyright can arise in various situations, including where two or more authors collaborate on a single work, or where one author incorporates another author's work into their own. In Angella Katatumba v ACCU - the plaintiff claimed that she had co - authoured the lets go green song with Joycelyn Keko however she paid keko who sold to her her economic rights to the song

Copyright in Ephemeral Recordings / Broadcasts

An ephemeral recording is a recording made by a broadcasting company of a broadcast, in one or several copies of any work which it is authorized to broadcast, for the purpose of its own broadcast and by means of its own facilities. Attorney General v Sanyu TV

Section 16 CNRA outlines the conditions under which a broadcasting company may make an ephemeral recording of a broadcast.

1. A broadcasting company may make an ephemeral recording of a broadcast for the purpose of its own broadcast and by means of its own facilities.

2. No copyright shall exist in a broadcast that infringes, or to the extent that it infringes, the copyright in another broadcast.

3. All copies of the ephemeral recording shall be destroyed within a period of six months or a longer period as may be authorized by the copyright owner.

4. If a recording under subsection (1) is of exceptional documentary character, a copy of the recording may be preserved for the National Archives.

5. The preservation of a copy under subsection (4) does not affect the rights of the author in the work that was broadcast.

Whether the recording of a broadcast under subsection (1) is of an exceptional documentary character is a question of fact to be determined having regard to all the circumstances and in particular to the need for the enhancement of the historical or social aspect of life in Uganda.

COPYRIGHT IN THE DIGITAL AGE

Navitre Inc v EasyJet Airline Co. and BulletProof Technologies, Inc. was a copyright infringement case in the digital era, involving the protection of software and user interfaces The case highlights the challenges of copyright protection in the digital age, particularly in relation to software and user interfaces.

In this case, Navitre Inc. claimed that EasyJet Airline Co. had infringed its copyright in various aspects of their booking system software. The key points of the case are as follows:

1. Navitre Inc. developed a software system for British Airways and later sold it to EasyJet

2. Navitre Inc. claimed that the "business logic" of the program was copyrightable, but the court rejected this claim as it would unjustifiably extend copyright protection

3. The court did protect the Graphic User Interfaces (GUIs) and icons, as they qualified as artistic works and required skill and labor to arrange the screens in a certain way.

4. EasyJet was found to have infringed Navitre's copyright by copying the icons used in the GUIs.

5. The court also considered the "TakeFlight" functionality, but ultimately found that EasyJet had not infringed Navitre's copyright in this area..

COLLECTING SOCITIES

Collecting societies are organizations that are responsible for collecting and distributing royalties on behalf of copyright owners. In Uganda, collecting societies are regulated by the Copyright and Neighbouring Rights Act of 2006. Sections 57 to 58 of the Act outline the roles and qualifications of collecting societies as follows:- Uganda Performing Rights Society v MTN

Section 57: CNRA No collecting society shall operate in Uganda without a registration certificate issued by the Registrar of Companies.

The Registrar of Companies shall not register another society in respect of the same bundle of rights and category of works if there exists another society that has already been licensed and functions to the satisfaction of its members.
Any person operating as a collecting society or causing any society or body to operate as a collecting society without a registration certificate commits an offence and is liable on conviction to a fine not exceeding one hundred currency points or to a term of imprisonment not exceeding two years or to both the fine and imprisonment.

Section 58 CNRA -he Registrar may register as a collecting society any society or body which has for its main object the promotion of the economic and social interest of its members through defending their copyright and neighbouring right interests.

The function or other objects of the society shall include promoting and encouraging creativity in the artistic, literary, and scientific fields in Uganda, promoting and carrying out public awareness on copyright and neighbouring rights, paying royalties to its members who are the appropriate beneficiaries, making reciprocal agreements with foreign societies or other bodies of authors or neighbouring rights owners for the issue of authorizations in respect of their members’ works and for the collection and distribution of copyright fees deriving from those works, and providing its members or other persons in need of it with information on all matters relating to copyright and neighbouring rights and to give advice and keep its members informed about their rights and interests.

The Registrar shall not register a society unless the Registrar is satisfied that the society is capable of promoting its members’ interests and of discharging its functions and objectives, it consists of at least thirty persons all of whom are qualified to be members, and the society is incorporated under the provisions of the Companies Act.

Collecting societies are responsible for collecting and distributing royalties on behalf of copyright owners. Sections 57 to 58 of the Copyright and Neighbouring Rights Act of 2006 in Uganda outline the roles and qualifications of collecting societies, including the requirement for registration, the main objects of the society, and the conditions for registration.

UPRS v MTN is a copyright litigation case in Uganda that involved the Uganda Performing Rights Society (UPRS) and MTN (U) Ltd. UPRS sued MTN for copyright infringement, alleging that MTN was using copyrighted music without paying royalties to UPRS. The Commercial Court came out with a pronouncement on the powers of a Collecting Society to demand for royalties in music performances, which was seen as a step in the right direction for Uganda's copyright law

The general rule under Section 9 of the Copyright and Neighbouring Rights Act of 2006 in Uganda outlines the economic rights of the owner of a protected work. The section specifies that the owner of a protected work shall have the exclusive right to do or authorize other persons to do the following:

To publish, produce or reproduce the work.
To distribute or make available to the public the original or copies of the work through sale or other means of transfer of ownership.
To perform the work in public.

Copyright infringement is any dealing with a work or performance without a valid transfer, license, assignment, or other authorization -S.46 CNRA- Stella Atal v Kiruta

Actions that constitute infringement:

1. Reproducing, fixing, duplicating, extracting, imitating, or importing into Uganda otherwise than for personal use.- S.46(1) a CNRA

2. Distributing in Uganda by way of sale, hire, rental, or like manner.- S.46(1) b CNRA

3. Exhibiting to the public for commercial purposes by way of broadcast, public performance, or otherwise.S.46(1) c CNRA

4. Using a piece of work in a manner prejudicial to the honor or reputation of the author.-S.46(2) CNRA

Penalties for copyright infringement:- S.47 CNRA

1. A person who commits copyright infringement is liable on conviction to a fine not exceeding one hundred currency points or imprisonment not exceeding four years or both.

2. If the infringement is a continuing offense, the person is liable to a further fine not exceeding two currency points for each day on which the offense is continued.

The elements of copyright infringement include:

1. Ownership of a valid copyright: The plaintiff must show that they own a valid copyright in the work that has been infringed.

2. Copying of original elements: The plaintiff must show that the defendant copied original elements of the copyrighted work. The copying does not have to be exact, but it must be substantial.- In Ravens craft v Hubbert - infringement occurred as a substantial part had been copied

3. Unauthorized use: The plaintiff must show that the defendant used the copyrighted work without permission or in a way that exceeded the scope of the permission granted by the copyright owner. - Angella Katatumba v ACCU , John Murray Publishers v Ssekindu

There are two types of copyright infringement: primary infringement and secondary infringement.

1. Primary infringement: Primary infringement occurs when someone directly infringes on one of the exclusive rights of the copyright owner, such as copying, distributing, performing, displaying, or creating derivative works of a copyrighted work without permission. - Good gear Machinery v Jackson

2.Secondary infringement: Secondary infringement occurs when someone contributes to or facilitates the infringement of a copyrighted work by someone else. This can include providing the means for making infringing copies, distributing infringing copies, or facilitating public performances of copyrighted works.- Moore House v University of New South Wales - use of photocopiers amounted to secondary infringement

Forms of copyright infringement include:

Text and images: This is the classic form of copyright infringement, where someone directly copies protected text or graphic images in a work that is distributed to the public.
Web use: The internet offers nearly unlimited opportunities for easy copyright infringement. Anyone who downloads an image for their own use or uses a “pointer” to bring an image up to their webpage is violating copyright.
Digital reproduction and display: Unauthorized downloading of copyrighted material is another common form of copyright infringement. Copying, selling, or distributing the file without permission represents copyright infringement.
Photocopying: Using a photocopier to reproduce a book or magazine article, or any other copyright, unless the photocopying is done for strictly personal use, is copyright infringement.

Indirect copying,/Secondary Infringemenent also known as indirect infringement, occurs when a person deals with materials that infringe copyright, rather than copying the work themselves.. To establish indirect infringement in court, a plaintiff must show that there was direct infringement, plus an indirect infringer who knew of it and either materially contributed to or induced the direct infringement

Substantial & Unsubstantial Infrimgment

Angella Katatumba v Anti Corruption Coalition Uganda

Substantial infringement is were a large part of the copyrighted work is infringed while unsubstantial a little of the copyrighted work is infringed

In Manu Dibango v. Michael Jackson and Rihanna. In 2009, Cameroonian saxophonist Manu Dibango filed a lawsuit against Michael Jackson and Rihanna for copyright infringement over his 1972 hit, Soul Makossa. The lawsuit claimed that Jackson's 1983 track, Wanna Be Startin' Something, used a chant that sounded similar to the Duala chant in Dibango's classic Soul Makossa. Jackson had already admitted to borrowing the line and settled with Dibango out of court. However, when Rihanna asked to sample Jackson on her song Don't Stop the Music, Jackson agreed without contacting Dibango. Dibango's lawyers brought the case before a Parisian court, demanding €500,000 in damages and that Sony BMG, EMI, and Warner Music be barred from receiving "mama-say mama-sa"-related income until the matter is resolved. French judges announced on February 17, 2009, whether they would hear the case. In 2021, Manu Dibango summoned Michael Jackson and Rihanna for plagiarism before the Paris tribunal de grande instance and claimed a sum of money in damages.

REMEDIES TO COPYRIGHT INFRINGMENT

The remedies for copyright infringement include civil and criminal sanctions. In Uganda, Section 45 of the Copyright and Neighbouring Rights Act (CNRA) provides for civil remedies, which include:

Damages: this is a form of monetary compensation for losses incurred - Angella Katatumba v Anti coruption Coalition Uganda./ Rokes v Banard The copyright owner may be entitled to damages for any loss suffered as a result of the infringement. The damages may be assessed on the basis of the actual loss suffered by the copyright owner or on the basis of the profits made by the infringer. UPRS v Fred Mukubira
Injunctions: An injunction is a court order that requires the infringer to stop infringing the copyright. Injunctions can be temporary or permanent and can be granted at any stage of the proceedings- American Cynamid v Ethicon.
Delivery up (and destruction) of infringing copies: The court may order the infringer to deliver up all infringing copies of the work and to destroy them.
Order for an account: The court may order the infringer to provide an account of all profits made from the infringement- John Muarry v Ssekidu .
Anton Piller /Order of inspection or removal of infringing material from the premises: The court may order the infringer to allow the copyright owner or their representatives to inspect the infringing material and to remove it from the premises.- UPRS v Fred Mukubira
Criminal sanctions: In addition to civil remedies, copyright infringement can also result in criminal sanctions. Under Section 47 of the CNRA, a person who infringes copyright is liable on conviction to a fine or imprisonment or both- S.47,48.49.59 CNRA

DEFENCES TO COPYRIGHT INFRINGMENT

Section 15 of the Copyright and Neighbouring Rights Act of 2006- in Uganda deals with fair use of works protected by copyright. The section specifies that the fair use of a protected work in its original language or in a translation shall not be an infringement of the right of the author and shall not require the consent of the owner of the copyright in certain circumstances. These circumstances include:

The production, translation, adaptation, arrangement, or other transformation of the work is for private personal use only.
A quotation from a published work is used in another work, including a quotation from a newspaper or periodical in the form of a press summary, where the quotation is compatible with fair practice, the extent of the quotation does not exceed what is justified for the purpose of the work in which the quotation is used, and acknowledgement is given to the work from which the quotation is made.
A published work is used for teaching purposes to the extent justified for the purpose by way of illustration in a publication, broadcast, or sound or visual recording insofar as the use is compatible with fair practice and acknowledgement is given to the work and the author.
The work is communicated to the public for teaching purposes for schools, colleges, universities, or other educational institutions or for professional training or public education insofar as the use is compatible with fair practice and acknowledgement is given to the work and the author.
The work is reproduced, broadcast, or communicated to the public with acknowledgement of the work, in any article printed in a newspaper, periodical, or work broadcast on current economic, social, political, or religious topic unless the article or work expressly prohibits its reproduction, broadcast, or communication to the public.

It is important to note that a translation made under this section shall not be used for any commercial purpose. In summary, Section 15 of the Copyright and Neighbouring Rights Act of 2006 in Uganda outlines the circumstances under which fair use of works protected by copyright is allowed without infringing on the right of the author or requiring the consent of the owner of the copyright

The Tests on Fair Use - Angella Katatumba v ACCU

1. Dealing / Use of Copyright is commercially exploitative

2. Work is published to the public

3. The amount of work copied is it substantial. A Substatial ammount in the Angella v Katatumba case was considred as a large amount of work was copied ACCU copied almost the whole song 1min 30 seconds

The Deminimis Principle

This principle means the law shallnt care for trivial matters

In Navartire v Easy Jet - it was held that one cant copyright small titles

LICENSING & ASSIGNMENT- S.14 CNRA

Licensing is a legal agreement between the owner of a copyright and another party that allows the other party to use the copyrighted work in a specific way, for a specific purpose, and for a specific period of time.

A license is a form of contract that is available to another person to use the copyright only. Licensing can be exclusive or non-exclusive, and the terms of the license can vary depending on the agreement between the parties.

Assignment is the transfer of ownership of a copyright from one person to another. the assignment must be in writing and signed by the owner of the right or by the owner’s agent and by the person to whom the rights are being assigned.

Once the assignment is complete, the assignee becomes the new owner of the copyright and has the exclusive right to exploit the work, including its publication, distribution, and reproduction.

In Uganda Performing Rights society v Harequin Records - were one assigns his copy rights he/she cant sustain a cause of action in copyright

The work is beyond its protected duration

In Lauri v Renard - it was stated that a claimant can’t sustain a cause of action in infringment and aremedy when time has elapsed

IMAGE RIGHTS

Image rights refer to an individual's proprietary rights in their personality and the ability to exploit, and to prevent unauthorized use of, their image or likeness for commercial or promotional purposes.

While image rights are not explicitly recognized under Ugandan law, individuals' rights to their image and likeness are derived from other laws, including the right to privacy and the right of publicity.

The right of publicity is the right to keep one's image and likeness from being commercially exploited without permission or contractual compensation.

The right to privacy is a constitutional right enshrined under Article 27(2) of the Constitution of the Republic of Uganda, 1995, as amended.

ELEMENTS

1. Commercial Exploitation of personality

2. Person is Clearly identified by Community

3. Person doesnot consent to use of his/her image

4. Damages

Asenge Winnie v Opportunity Bank (U) Ltd & MAAD

Facts: In 2013, Winnie Asege sued Opportunity Bank Uganda Limited and MAAD Ltd, an advertising agency, after she saw her picture in a newspaper advertisement for the bank without her permission.Asege claimed that the bank and the advertising agency had violated her right to privacy and her right to control the use of her image.The bank and the advertising agency denied the claim, stating that they had engaged the services of MAAD Limited, which is an advertising company, and that MAAD Limited was responsible for the advertisement.

Issues: Whether the bank and the advertising agency violated Asege's right to privacy and her right to control the use of her image.

Whether MAAD Limited was responsible for the advertisement.

Holding: The court found that the bank and the advertising agency had violated Asege's right to privacy and her right to control the use of her image.The court held that the bank and the advertising agency were jointly and severally liable to Asege for the damages caused by the unauthorized use of her image.

The court also found that MAAD Limited was responsible for the advertisement and was therefore jointly and severally liable with the bank and the advertising agency for the damages caused to Asege.

The court awarded Asege UGX 150 million in damages.

Semanda v Airtel (U) Ltd and Anor (H.C.Miscellaneous Application No. 996 of 2020) [2021] UGCommC 79 (19 August 2021)

Facts: In 2020, Semanda sued Airtel Uganda Ltd and Blu Flamingo after he saw his picture in a Kabaka’s run advertisement for Airtel without his permission.Semanda claimed that Airtel had violated his right to privacy and his right to control the use of his image. Airtel denied the claim, stating that they had engaged the services of an advertising agency, which was responsible for the advertisement.

Issues: Whether Airtel violated Semanda's right to privacy and his right to control the use of his image.

Whether the advertising agency was responsible for the advertisement.

Holding:- The court found that Airtel had violated Semanda's right to privacy and his right to control the use of his image.The court held that Airtel was jointly and severally liable to Semanda for the damages caused by the unauthorized use of his image.

The court also found that the advertising agency was responsible for the advertisement and was therefore jointly and severally liable with Airtel for the damages caused to Semanda.The court awarded Semanda UGX 50 million in damages

Nalubega Shadia v Stabex

Facts :Shadia Nalubaega, a former employee of Stabex International, has sued the company over the unauthorized use of her images in promoting its products.Nalubaega claims that she was photographed without her consent while working for Stabex, and her images were later used on billboards, media, brochures, fliers, and social media in advertising and marketing campaigns to promote Stabex products. Nalubaega alleges that Stabex continued to use and earn from her images even after unfairly terminating her contract in March 2021.

Issues: Whether Stabex International violated Nalubaega's right to privacy and her right to control the use of her image

Whether Stabex International unfairly benefited from the use of Nalubaega's images in promoting its products.

Whether Nalubaega is entitled to damages for the unauthorized use of her images.

Holding: Nalubega was awarded damages

TRADEMARKS

Definition of a Trademark A trademark is a symbol, word, phrase, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of others[1]. In other words, a trademark is a unique identifier that helps consumers recognize and associate a particular product or service with a specific company or brand. - Nice Plastics v Hamidu Lubega

Section 1(1) of the Trademarks Act, 2010 ,a trademark as a sign or mark or combination of signs or marks capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking.

The definition includes any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral, or any combination of them. The section also clarifies that a sign shall be capable of graphical representation in order to be registered. This means that a trademark must be capable of being represented in a visual form, such as a drawing or a digital image, in order to be registered.

Functions / Purpose of Trademarks

Arsenal Football Club v Mathew Reed

In Arsenal Football Club v Matthew Reed is a trademark infringement case concerning the sale of unlicensed Arsenal Football Club merchandise. The following are the facts, issues, and holding of the case:

Facts: Arsenal Football Club brought a case against Matthew Reed, alleging that he had infringed certain of their registered trademarks and had carried out acts of passing off. Reed sold football memorabilia from outside the grounds of the Club for over 30 years on which the Club's trade marks were used. Reed argued that he was not using trade marks within Section 10 of the Trade Marks Act 1994 (concerning infringement), and alternatively, that the marks were incapable of distinguishing the Club's goods in a "trade mark sense". The judge in his first judgment held that the allegations of passing off had not been established. The judge went on to conclude that the defense raised an issue of construction of the Trade Mark Directive (89/104/EEC) which could not be decided without a reference to the European Court of Justice (ECJ) .

Issues:- Whether Reed's use of signs identical to Arsenal's registered trade marks is liable to affect one of the functions of Arsenal's registered trade marks.

- Whether Reed's use of the Arsenal marks was trade mark use.

- Whether Reed's use of the marks was likely to affect the functions of the trade marks..

Holding:- The judge concluded that the ECJ had disagreed with findings of fact made by him in his first judgment[3].

The ECJ concluded that the use of the Arsenal signs on Mr. Reed's products carries no message of trade origin[3].
The High Court decided that it was unclear under the Trade Marks Act 1994 as to whether Reed's use of the marks was trade mark use[4].
The Court of Appeal found that Reed's use of the Arsenal marks was trade mark use and that he had infringed Arsenal's trade marks

From the case

The Purpose of Trademarks

Trademarks help consumers identify and associate a particular product or service with a specific company or brand. This can help build brand loyalty and trust among consumers.
Trademarks can be registered with the government to provide legal protection against unauthorized use by others. This can help prevent confusion among consumers and protect the reputation and goodwill of the trademark owner.
Trademarks can be used to differentiate products or services from those of competitors. This can help companies stand out in a crowded marketplace and attract customers.
Trademarks can have significant economic value. A strong trademark can increase the value of a company and its products or services, and can be licensed or sold to others for a profit.

ELEMENTS OF A TRADEMARK

DISTINCTIVNESS OF MARK

Section 4(2) of the Trademarks Act (TMA) deals with the distinctiveness of a trademark. According to this section, a trademark must be distinctive in order to be registered[1]. In other words, a trademark must be capable of distinguishing the goods or services of one person from those of others. Here are some of the factors that are considered when determining the distinctiveness of a trademark under Section 4(2) TMA:

The inherent distinctiveness of the trademark: This refers to the extent to which the trademark is inherently capable of distinguishing the goods or services of one person from those of others. A trademark that is highly distinctive, such as an invented word or a fanciful design, is more likely to be registered than a trademark that is less distinctive, such as a descriptive word or a common design.

The acquired distinctiveness of the trademark: This refers to the extent to which the trademark has become associated with the goods or services of one person in the minds of consumers. A trademark that has acquired distinctiveness through use and promotion, such as a well-known brand name, is more likely to be registered than a trademark that has not yet acquired distinctiveness.

The nature of the goods or services: This refers to the type of goods or services that the trademark is used to identify. A trademark that is used to identify highly specialized or unique goods or services is more likely to be registered than a trademark that is used to identify common or generic goods or services.

The similarity of the trademark to other trademarks: This refers to the extent to which the trademark is similar to other trademarks that are already registered or in use. A trademark that is too similar to another trademark is less likely to be registered than a trademark that is sufficiently distinct.

Overall, the distinctiveness of a trademark is an important factor in determining whether it is eligible for registration under Section 4(2) TMA. Trademarks that are highly distinctive and capable of distinguishing the goods or services of one person from those of others are more likely to be registered than trademarks that are less distinctive or too similar to other trademarks.

GRAPHICAL REPRESENTATION

This means that the trademark should be represented in a clear and precise manner that allows it to be reproduced on paper or in electronic form. Examples of graphical representations of trademarks include drawings, images, and digital files.

In the BV v Joost Kist case, the issue was whether a sound mark could be registered as a trademark. The sound mark in question was a series of notes that were played when a user logged into a website. The Dutch Supreme Court held that the sound mark was not capable of graphical representation and therefore could not be registered as a trademark. The court reasoned that the sound mark could not be represented in a clear and precise manner that would allow it to be reproduced on paper or in electronic form.

This case highlights the importance of graphical representation in trademark law. In order for a trademark to be registered, it must be capable of being represented in a clear and precise manner that allows it to be reproduced. This requirement ensures that trademarks are easily identifiable and distinguishable, and that they can be protected under trademark law.

PROTACTABLE SUBJECT MATTER

In the case of Kampala Stocks Supermarket v Seven Days International, the issue was whether a trademark could be registered for the phrase "Everyday Low Prices" in relation to retail services. The court held that the phrase was not capable of being protected as a trademark because it lacked distinctiveness and was a common phrase used in the retail industry.

The concept of protectable subject matter in trademark law refers to the types of marks that are eligible for protection under trademark law. In general, a trademark must be capable of distinguishing the goods or services of one person from those of others in order to be eligible for protection. Here are some examples of protectable subject matter in trademark law:

Word marks: A word mark is a trademark that consists of one or more words that are used to identify a particular product or service. Examples of word marks include "Coca-Cola," "Nike," and "Apple."
Design marks: A design mark is a trademark that consists of a design or logo that is used to identify a particular product or service. Examples of design marks include the Nike "swoosh," the Apple logo, and the McDonald's golden arches.
Slogan marks: A slogan mark is a trademark that consists of a phrase or slogan that is used to promote a particular product or service. Examples of slogan marks include "Just Do It," "I'm Lovin' It," and "The Ultimate Driving Machine."
Color marks: In some cases, a trademark can consist of a particular color or combination of colors that are used to identify a particular product or service. Examples of color marks include the Tiffany blue color used by Tiffany & Co. and the UPS brown color used by United Parcel Service.

DURATION OF TRADEMARK REGISTRATION

Duration and renewal of registration of a trademark are governed by Section 21 of the Trademark Act. Here is a breakdown of the duration and renewal process:

A trademark registration is valid for a period of 7 years from the date of registration.
After the initial 7-year period, the trademark can be renewed for successive periods of 10 years each.
There is no limit to the number of times a trademark can be renewed, as long as the renewal fees are paid and the trademark is still in use.

Renewal:

To renew a trademark registration, an application must be filed with the relevant trademark office before the expiration of the current registration period.
The renewal application must include the registration number, the name and address of the trademark owner, and evidence of use of the trademark in commerce.
The renewal fees must also be paid at the time of filing the renewal application.
If the renewal application is accepted, the trademark registration will be renewed for another 10-year period.
If the renewal application is not filed before the expiration of the current registration period, the trademark registration will expire and the trademark owner will lose the legal protection afforded by the registration.

REGISTER OF TRADEMARKS

Section 2 of the Trademarks Act, 2010 provides for the Register of Trademarks. The following are the key provisions of this section:

1. The registrar shall maintain a manual register of trademarks in his or her office.

2. The registrar may also maintain an electronic register of trademarks subject to prescribed safeguards.

3. The register shall contain all registered trademarks with the names, addresses, and descriptions of their owners, registered users, notifications of assignments and transmissions, disclaimers, conditions, limitations, and other matters relating to registered trademarks as may be prescribed.

4. The register shall be divided into two parts called Part A and Part B respectively.

5. A record of particulars or other matter made using electronic form for the purpose of keeping the register shall be taken to be an entry in the register.

6. The register shall be open to the inspection of the public subject to such regulations as may be prescribed.

7. The register shall be kept under the control and management of the registrar.

STEP BY STEP GUIDE OF REGISTRATION OF A TRADEMARK

1. Trademark search: Before filing a trademark application, it is important to conduct a trademark search to ensure that the proposed trademark is not already registered or in use by another party. This search can be conducted online or through a trademark agent.

2. Filing of the trademark application: Once the trademark search has been conducted, the next step is to file a trademark application with the relevant trademark office. The application must include the proposed trademark, the goods or services to which the trademark will be applied, and the name and address of the trademark owner.

3. Examination of the trademark application: After the trademark application has been filed, it will be examined by the trademark office to ensure that it meets the requirements for registration. This examination includes a review of the distinctiveness of the trademark, as well as a search for any conflicting trademarks.

4. Publication of the trademark application: If the trademark application is found to be acceptable, it will be published in the trademark journal to allow for opposition by third parties. If no opposition is filed within the specified period, the trademark will proceed to registration.

5. Registration of the trademark: Once the trademark has been accepted and no opposition has been filed, it will be registered and a certificate of registration will be issued. The trademark owner can then use the registered trademark to identify and distinguish their goods or services from those of others.

REGISTRATION OF TRADEMARKS

The procedure for registering a trademark in Uganda is outlined in Part III of the Trademarks Act, 2010. The following is a step-by-step guide to the registration process under Sections 5, 6, 7, 9, 10, 11, and 12:

Section 5 Trademarks Act - Conduct a search: Before applying for registration, the applicant should conduct a search to ascertain whether the trademark exists in the register.

Section 6 Trademarks Act -Seek preliminary advice: The applicant may obtain advice from the registrar as to whether the proposed trademark appears to be inherently adapted to distinguish or capable of distinguishing goods or services of the proposed undertaking from those of other undertakings.

Section 7 Trademarks Act - Application for registration: The applicant should apply in writing to the registrar in the prescribed form for registration in Part A or Part B of the register. The registrar may accept the application absolutely or subject to amendments, modifications, conditions, or limitations.

Section 9 Trademarks Act - Distinctiveness requisite for registration under Part A: In order for a trademark other than a certification mark to be registered in Part A of the register, the trademark shall contain or consist of at least one of the following essential particulars: the name of a company, individual or firm, represented in a special or particular manner; the signature of the applicant for registration or of some predecessor in his or her business; an invented word or invented words; a word or words having no direct reference to the character or quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname; or any other distinctive mark .

Section 10 Trademarks Act - Capability of distinguishing requisite for registration under Part B: For a trademark to be registered in Part B of the register, it must be capable of distinguishing goods or services of one undertaking from those of another undertaking

Section 11 Trademarks Act - Publication of application: The registrar shall publish the application in the prescribed manner.

Section 12 Trademarks Act - Objection to registration: Any person may, within sixty days from the date of publication of the application, give notice of opposition to the registration of the trademark.

If there is no opposition, the registrar shall proceed to register the trademark.

OBJECTION TO REGISTRATION

Objection to registration is a process by which a third party can challenge the registration of a trademark. Here are the relevant sections and regulations that govern the objection process:

Section 12 of the Trademarks Act provides for the grounds of objection to the registration of a trademark. These grounds include:

The trademark is identical or similar to an earlier trademark that is already registered or in use in relation to the same or similar goods or services.
The trademark is likely to deceive or cause confusion among consumers.
The trademark is contrary to law or morality.
The trademark is likely to hurt religious susceptibilities.
Regulation 29 of the Trademark Regulations provides for the procedure for filing an objection to the registration of a trademark. The objection must be filed in writing with the relevant trademark office, and must include the grounds for objection and any evidence in support of the objection.
Regulation 30 of the Trademark Regulations provides for the procedure for hearing and deciding an objection to the registration of a trademark. The trademark office will notify the trademark owner of the objection and provide an opportunity to respond. The trademark office will then consider the evidence and arguments presented by both parties and make a decision on whether to allow or refuse the registration of the trademark.

REGISTRATION UNDER PART A & PART B

Registration under Part A

Section 9(1) of the Trademarks Act provides for the registration of trademarks under Part A. Here is an explanation of what registration under Part A entails:

Part A registration is a full registration of a trademark that provides the trademark owner with exclusive rights to use the trademark in relation to the goods or services for which it is registered.

Part A registration is available for trademarks that are capable of distinguishing the goods or services of one person from those of others and that are not prohibited by law.

To register a trademark under Part A, an application must be filed with the relevant trademark office. The application must include the proposed trademark, the goods or services to which the trademark will be applied, and the name and address of the trademark owner.

The trademark office will examine the application to ensure that the trademark meets the requirements for registration, including distinctiveness and non-prohibition.

If the trademark is found to be acceptable, it will be published in the trademark journal to allow for opposition by third parties. If no opposition is filed within the specified period, the trademark will proceed to registration.

Once the trademark is registered under Part A, the trademark owner can use the registered trademark to identify and distinguish their goods or services from those of others. The trademark owner also has the exclusive right to prevent others from using the same or similar trademark in relation to the same or similar goods or services.

Part A registration is valid for a period of 7 years from the date of registration, and can be renewed for successive periods of 10 years each

“ Surnames”

Fantastic Sam’s Service Mark (1990) RPC 531 , The applicants sought registration in part A of the register of the words FANTASTIC SAM’S as an unused service mark for hair dressing services included in class 42.

Held; refusing the application, The mark constituted of a laudatory word and the possessive form of a common familiar Christian name and having regard to the widespread practice of hair dressers using their Christian names as a trading style, the mark was not distinctive. Accordingly, it was not acceptable prima facie in part A.

REGISTRATION UNDER PART B

Sections 10(1) and (2) of the Trademarks Act provide for the registration of trademarks under Part B. Here is an explanation of what this means:

Registration under Part B:

Part B of the Trademarks Act is a register of trademarks that are considered to be less distinctive or have not yet acquired distinctiveness.

Trademarks that are registered under Part B are entitled to a lower level of protection than trademarks that are registered under Part A, which is a register of trademarks that are considered to be inherently distinctive or have acquired distinctiveness through use.

To be eligible for registration under Part B, a trademark must be capable of distinguishing the goods or services of one person from those of others, but may not be inherently distinctive or may not have acquired distinctiveness through use.

The registration process for Part B trademarks is similar to that for Part A trademarks, including the requirement to file a trademark application, undergo examination, and publish the application for opposition.

Once a trademark is registered under Part B, the trademark owner has the exclusive right to use the trademark in relation to the goods or services for which it is registered.

The registration of a Part B trademark is valid for a period of 7 years from the date of registration, and can be renewed for successive periods of 10 years each

ASSCOSIATED MARKS

Associated marks are a type of trademark that are protected under Section 29 of the Trademarks Act 2010. Here is an explanation of what associated marks are and how they are protected:

Associated marks are trademarks that are used in relation to goods or services that are associated with the goods or services for which a registered trademark is used. For example, if a company has a registered trademark for a particular brand of shoes, it may also use associated marks for related goods or services, such as socks, shoelaces, or shoe cleaning products.

Associated marks are protected under Section 29 of the Trademarks Act, which provides that the use of an associated mark in relation to goods or services that are associated with the goods or services for which a registered trademark is used does not constitute infringement of the registered trademark.

However, the use of an associated mark must not be likely to deceive or cause confusion among consumers as to the origin of the goods or services.

The protection of associated marks is important for companies that offer a range of goods or services that are associated with a particular brand or trademark. By using associated marks, these companies can expand their product lines while still maintaining the protection and exclusivity of their registered trademark.

SERIES MARKS

Section 30 Trademarks Act 2010,. A series of trademarks refers to a number of trademarks that resemble each other as to their material particulars and differ only in respect of matter of a non-distinctive character which does not substantially affect the identity of the trademark. The variation between members of a series must be such that no additional element or dimension contributes to the overall identity of the marks, and the idea of the mark must remain essentially the same

TRADEMARK & CERTIFED MARKS

S. 13 Trademarks Act 2010

Trademarks:

A trademark is a symbol, word, phrase, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of others.
A trademark can be registered with the government to provide legal protection against unauthorized use by others.
The purpose of a trademark is to prevent confusion among consumers and to protect the reputation and goodwill of the trademark owner
A trademark can be used by any company or individual to identify and distinguish their goods or services from those of others.

Certified marks:

A certified mark is a type of trademark that is used to certify the quality, origin, or other characteristics of goods or services.
A certified mark is owned by a certifying authority, which is an organization that is authorized to certify the quality, origin, or other characteristics of goods or services.
The use of a certified mark indicates that the goods or services have been certified by the certifying authority as meeting certain standards or criteria.
A certified mark can only be used by companies or individuals who have been certified by the certifying authority as meeting the relevant standards or criteria.

Examples of Certified Marks include Marks by UNBS

GROUNDS OF REFUSAL OF REGISTRATION OF A TRADEMARK

Section 23 (1) of the Trademarks Act provides for the grounds of refusal of registration of a trademark. These grounds include:

1. The trademark is not distinctive enough to identify and distinguish the goods or services of one party from those of others.

2. The trademark is likely to deceive or cause confusion among consumers as to the origin, quality, or characteristics of the goods or services.

3. The trademark is prohibited by law, such as being vulgar, obscene, or immoral.

4. The trademark is likely to hurt religious susceptibilities.

5. The trademark is identical or similar to an earlier trademark that is already registered or in use in relation to the same or similar goods or services.

The Ghazilian Trademark case [2002] RPC 628 involved an application for registration of the trademark "Tiny Penis" in class 25 in respect of clothing, footwear, and headgear. The Registrar refused the registration on the ground that the mark was contrary to the accepted principles of morality. The appellate authority dismissed the appeal, concluding that this trademark would cause greater offense than mere distaste to a significant section of the public[6].

Facts:The case involved an application for registration of the trademark "Tiny Penis" in class 25 in respect of clothing, footwear, and headgear.

Issues: whether the trademark "Tiny Penis" was contrary to the accepted principles of morality and therefore ineligible for registration.

Holding: The Registrar refused the registration of the trademark on the ground that it was contrary to the accepted principles of morality. The appellate authority dismissed the appeal, concluding that this trademark would cause greater offense than mere distaste to a significant section of the public.

Section 23(2) of the Trademarks Act 2010 provides for the grounds of refusal of registration of a trademark on the basis of deception. Here is an explanation of what deceptive marks are:

A deceptive mark is a trademark that is likely to deceive or cause confusion among consumers as to the nature, quality, or geographical origin of the goods or services for which the trademark is used.

Deceptive marks are not registrable under Section 23(2) of the Trademarks Act 2010, as they are considered to be misleading and harmful to consumers.

Examples of deceptive marks include trademarks that falsely claim to be associated with a particular geographic location, trademarks that falsely claim to be made from a particular material, and trademarks that falsely claim to have a particular quality or characteristic.

The purpose of the prohibition on deceptive marks is to protect consumers from false or misleading advertising and to ensure that trademarks accurately reflect the nature and quality of the goods or services for which they are used

The trademark office will examine trademark applications to ensure that they do not contain deceptive marks, and may refuse registration of a trademark on the grounds of deception if it is likely to deceive or cause confusion among consumers.

Shape Marks

Section 23 (5) of the Trademarks Act provides for the grounds of refusal of registration of a trademark on the basis of shape, configuration, or packaging. Here is an explanation of what this means:

Shape, configuration, or packaging marks are trademarks that consist of the shape, configuration, or packaging of the goods or services for which the trademark is used.

These types of trademarks are not registrable under Section 23 (5) of the Trademarks Act because they are considered to be primarily a means of identifying the source of the goods or services, rather than being a distinctive indicator of the source.

The purpose of the prohibition on shape, configuration, or packaging marks is to prevent the exclusive appropriation of a shape, configuration, or packaging that is necessary to perform the function of the goods or services.

The trademark office will examine trademark applications to ensure that they do not contain shape, configuration, or packaging marks, and may refuse registration of a trademark on the grounds of shape, configuration, or packaging if it is primarily a means of identifying the source of the goods or services.

In Société des Produits Nestlé SA v Mars UK Ltd, also known as the "Have a Break" case. The case was heard in the European Court of Justice (ECJ) and concerned Nestlé's application to register the shape of its four-fingered KitKat bar as a trade mark[4]. The following are the facts, issues, and holding of the case:

Facts:Nestlé applied to register the shape of its four-fingered KitKat bar as a trade mark.The application was rejected by the Trade Marks Registry and the High Court on the grounds that the mark was not inherently distinctive. Nestlé appealed the decision.

Issues: Whether the distinctive character of a mark referred to in Article 3(3) of the EC Trade Marks Directive may be acquired following or in consequence of the use of that mark as part of or in conjunction with another.

Whether the mark was inherently distinctive or had acquired distinctiveness through use.

Holding:The ECJ held that a trade mark can acquire distinctive character through use, even if it is used in conjunction with another mark.The Court of Appeal was tasked with deciding whether the use of the phrase "Have a Break" had been sufficient to connote trade origin and therefore acquire distinctiveness. The Court of Appeal ultimately agreed with the earlier findings that the mark was not inherently distinctive and confirmed the invalidity of the trade mark.

Identical / Resembling Marks

Section 25(1) of the Trademarks Act 2010 provides that a trademark that resembles another trademark that is already registered or in use in relation to the same or similar goods or services is not registrable.

The purpose of this provision is to prevent confusion among consumers and to protect the reputation and goodwill of the earlier trademark owner.

The trademark office will examine trademark applications to ensure that they do not resemble earlier trademarks that are already registered or in use in relation to the same or similar goods or services, and may refuse registration of a trademark on the grounds of resemblance if it is likely to cause confusion among consumers.

Section 25(2) of the Trademarks Act 2010 provides that a trademark that is identical or similar to an earlier trademark that is well-known in Uganda is not registrable in relation to any goods or services, regardless of whether the goods or services are similar or dissimilar to those for which the earlier trademark is registered or in use.

The purpose of this provision is to prevent the dilution of the distinctiveness and reputation of well-known trademarks, and to protect consumers from confusion or deception.

The trademark office will examine trademark applications to ensure that they do not contain identical or similar trademarks to well-known trademarks, and may refuse registration of a trademark on the grounds of resemblance if it is likely to dilute the distinctiveness or reputation of a well-known trademark.

Section 27 of the Trademarks Act 2010 provides that a trademark that is likely to deceive or cause confusion among consumers as to the nature, quality, or geographical origin of the goods or services is not registrable.

The purpose of this provision is to protect consumers from false or misleading advertising and to ensure that trademarks accurately reflect the nature and quality of the goods or services for which they are used.

The trademark office will examine trademark applications to ensure that they do not contain trademarks that are likely to deceive or cause confusion among consumers, and may refuse registration of a trademark on the grounds of deception or confusion if it is likely to mislead consumers as to the nature, quality, or geographical origin of the goods or services.

Likelihood of Confusion

In the Anglo Fabrics Ltd & Anor v African Queen Ltd - Justice Yorakum Bamwine likelihood of confusion is defined as a situation where the use of a trademark is likely to cause confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used

Likelihood of confusion is a key concept in trademark law that is used to determine whether a trademark is registrable or infringing on the rights of another trademark owner.

In the Anglo Fabrics v African Queen case, the court held that likelihood of confusion occurs when the use of a trademark is likely to cause confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used.

The court also held that likelihood of confusion is determined by considering a number of factors, including the similarity of the trademarks, the similarity of the goods or services, the channels of trade, the degree of care exercised by consumers, and the strength of the earlier trademark.

The purpose of the likelihood of confusion test is to protect consumers from confusion or deception, and to ensure that trademarks accurately reflect the nature and quality of the goods or services for which they are used.

Trademarks that are likely to cause confusion among consumers are not registrable under Section 23(1) of the Trademarks Act, and may be subject to opposition or cancellation proceedings if they are found to infringe on the rights of another trademark owner.

In Nairobi Java House Ltd case or the In the Matter of an Opposition of Registration by Mandela Auto parts case. Grounds for refusal of registration of a trademark on the basis of likelihood to create confusion include:

1. The similarity of the trademarks: The more similar the trademarks, the greater the likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used.

2. The similarity of the goods or services: The more similar the goods or services, the greater the likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used

3. The channels of trade: The more direct the channels of trade, the greater the likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used.

4. The degree of care exercised by consumers: The lower the degree of care exercised by consumers, the greater the likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used

5. The strength of the earlier trademark: The stronger the earlier trademark, the greater the likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark is used.

Direct Confusion

In the Nairobi Java House Ltd case and the In the Matter of an Opposition of Registration by Mandela Auto parts case, the trademark office or court would have examined the similarity of the trademarks, the similarity of the goods or services, the channels of trade, the degree of care exercised by consumers, and the strength of the earlier trademark to determine whether there was a likelihood of confusion among consumers as to the origin, quality, or characteristics of the goods or services for which the trademark was used. If the trademark office or court found that there was a likelihood of confusion, it would have refused the registration of the trademark on the basis of likelihood to create confusion.

In Sabel v Puma case, the similarity between the two logos played a significant role in the decision. Here are some key points about the similarity of the logos:

1. Sabel BV sought to register the trade mark SABEL and a device of a bounding cat (resembling a cheetah) for goods including jewellery, leather, clothing, and fashion accessories.

2. Puma AG opposed this registration on the basis of its earlier registrations for the separate devices of a bounding cat (a puma) and a leaping cat (also a puma), covering jewellery, leather, and clothing.

3. The European Court of Justice (ECJ) addressed the issue of the similarity of the logos in its preliminary ruling.

4. The court concluded that the similarity of signification between the pictorial component of the SABEL mark and the Puma mark, as a 'bounding feline beast of prey', was a relevant factor.

5. However, the ECJ also noted that the particular features of the depiction of the bounding feline in the Puma mark, such as its depiction as a silhouette, were not reproduced in the SABEL mark.

6. The court held that the similarity of the logos should be assessed by taking into account all factors relevant to the circumstances of the case.

In Marca Mode CV v Adidas AG and Adidas Benelux BV,

Facts

1. Marca Mode CV, a Belgian company, owned the trade mark rights to the three parallel lines logo, which had been used by the company since 1987.

2. Adidas AG and Adidas Benelux BV, both well-known companies in the sporting goods industry, used a similar three-stripe logo on their products.

3. Marca Mode CV filed a lawsuit against Adidas AG and Adidas Benelux BV for trade mark infringement, seeking to prevent the use of the three-stripe logo by Adidas.

Issues

1. Whether the three-stripe logo used by Adidas was confusingly similar to the three parallel lines logo owned by Marca Mode

2. The court also had to consider the impact of the Adidas logo on the freedom of competition in the market.

Holding

1. The court held that the three-stripe logo used by Adidas was not confusingly similar to the three parallel lines logo owned by Marca Mode.

2. The court emphasized the need to keep certain motifs available for use in the trade, in particular stripe motifs, and rejected the application of adidas and those of Marca Mode, C&A, H&M, and Vendex on the ground that the trade marks owned by adidas were not distinctive in themselves.

Aural , visual and Conceptual background

The aural, visual, and conceptual background relates to the overall impression that a trademark makes on a consumer. It includes the trademark's appearance, sound, and any other sensory experiences associated with the trademark. The aural, visual, and conceptual background is an element of likelihood to cause confusion because it influences the consumer's perception of the trademark and its associated goods or services

In Inter IKEA Systems BV (IKEA Systems) v. the Office for Harmonisation in the Internal Market (OHIM), the following facts were present:

1. Inter-Ikea Systems (IIS) has had a registered community and national trade mark in several Member States of the European Union for the mark IKEA in relation to goods and services in classes 16, 20, and 42 since 1996

2. In June 2002, IIS filed an application to annul the community trade mark registration for the sign and device, IDEA, in relation to identical goods

3. IIS claimed that IDEA created a likelihood of confusion with IKEA within the meaning of Article 8(1)(b) of the Community Trade Mark Regulation

4. The Cancellation Division of OHIM declared that IDEA was invalid but failed to state any reasons.

5. IIS appealed to OHIM’s First Board of Appeal, which upheld the appeal and set aside the decision of the Cancellation Division because the Board found that both marks were visually and conceptually dissimilar and there was no likelihood of confusion.

6. IKEA brought the case to the Court of First Instance (CFI) to annul the Board’s decision.

The CFI dismissed IIS's claim and ruled that:

1. Average consumers make their choices based on a number of functional and aesthetic considerations of each product.

2. The Court used the global assessment to find similarity and dissimilarity between the marks.

The Global Appreciation Test

The Global Appreciation test is a method used to determine the likelihood of confusion between two trademarks. Here is an explanation of the Global Appreciation test:- Sabel v Puma

Exceptions from Registration

Bonafide Use

This is use of a trademark in good faith

Use or Non Use

Sections 46, 47, 48, of the Trademarks Act, 2010 deal with the use and non-use of trademarks. The following is a summary of the key provisions of these sections:

1. Section 46 provides that a registered trademark may be removed from the register if it has not been used for a continuous period of five years and there are no valid reasons for non-use.

2. Section 47 provides that the owner of a registered trademark may apply to the registrar to vary or remove the trademark from the register.

3. Section 48 provides that any person may apply to the registrar to remove a registered trademark from the register on the grounds that the trademark has not been used for a continuous period of five years and there are no valid reasons for non-use.

from the register if the owner fails to renew the registration of the trademark within the prescribed manner and period.

Tecno Mobile Ltd v Kigalo Investments

This was a case in regards two conflicting trademarks ie Tecno that deals in phones and a Tecno dealer in Uganda ie Kigalo Investments who had applied to remove the Tecno trademark off the register on grounds of lack of proof of registration of that trademark in the country of origin, Court held that the applicant had authority to bring ie Tecno mobile ( hong kong) under Section 45 and 46 of the Trademarks Act 2010 and that the applicant highly demonstrated that it is the registred owner of the Tecno mobile Trademark and Respodent didn’t have authority to challenge the applicants ( Techno mobile hong kongs trademark )

ASSIGNMENT , LICENSING , TRANSMISSION OF A TRADEMARK

Sections 31, 32, 33, and 34 of the Trademarks Act 2010 deal with the assignment, licensing, and transmission of trademarks. The key provisions of these sections are as follows:

1. Section 31 states that a registered trademark is assignable and transmissible in connection with the goodwill of a business or not. It also clarifies that the rights to a trademark are subject to transmission to the personal representative of the owner on their death.

2. Section 32 provides that trademarks registered as or associated trademarks are assignable and transmissible only as a whole and not separately. However, they can be taken to have been registered as separate trademarks for all other purposes.

3. Section 33 outlines the process for registering assignments and transmissions. When a person becomes entitled to a registered trademark by assignment or transmission, they must apply to the registrar to register their title. The registrar will register the new owner and update the register accordingly.

4. Section 34 states that a person may not institute proceedings to prevent or recover damages for an unregistered trademark. However, it also clarifies that the common law right of action for passing off goods or services as those of another person is not affected by the Act.

Anglo Fabrics (Bolton) Ltd v African Queen Ltd

In the case of Anglo Fabrics (Bolton) Ltd v African Queen Ltd, the plaintiffs, Anglo Fabrics (Bolton) Ltd and Ahmed Zziwa, sought to protect their registered trademark 'Mekako' in Uganda. The plaintiffs had registered the trademark 'Mekako' under Part A of the Trademarks Act in respect of goods in class 3 on October 7, 1998. The trademark was renewed for a further period of 14 years from September 10, 2004.

However, the plaintiffs had executed two deeds of assignment in favor of Americ Enterprises Ltd on July 14, 2004, and January 20, 2007. These deeds were not registered on the Register of Trademark. The plaintiffs argued that rights in trademarks accrue on registration, and the court agreed with this legal position.

The defendants, African Queen Ltd and Sophy Nantongo, were found to be infringing the plaintiffs' registered trademark 'Mekako' and passing off their medicated soap product. The court granted a permanent injunction restraining African Queen from using the mark 'MEKAKO' on its soap and/or other products. The plaintiffs were also awarded damages and costs

In summary, the court in Anglo Fabrics (Bolton) Ltd v African Queen Ltd held that:

The plaintiffs successfully protected their registered trademark 'Mekako' in Uganda

The plaintiffs' rights in the trademark accrued on registration, as trademark protection is granted to trade dress, which includes the packaging or overall look and feel of a product

The defendants were found to be infringing the plaintiffs' trademark and passing off their product, leading to a permanent injunction and damages being awarded to the plaintiffs.

INFRINGEMENT OF A REGISTRED TRADEMARK

In Kampala Stock Supermarket v Seven Days Inter Ltd - Trademark infringement is defined as the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services[6]. In this case, the defendant was found to have infringed on the plaintiff's registered trademark by importing goods bearing the plaintiff's trademark without authorization.

In Kampala Stock Supermarket v Seven Days International Ltd, the elements of trademark infringement were:

1.Registration of the trademark: The plaintiff had registered its trademark in Uganda under Part A of the Trademarks Act.

2. Use of the trademark: The defendant was importing goods bearing the plaintiff's registered trademark without authorization.

3.Likelihood of confusion: The use of the plaintiff's registered trademark by the defendant was likely to cause confusion among consumers as to the source of the goods.

4.Absence of legal capacity: The defendant had no legal capacity to proceed under section 44 of the Trademarks Act.

5.Lack of authorization: The African manufacturer of the goods had not authorized the defendant to use the plaintiff's registered trademark.

Sections 36, 37, 38, 39, and 40 of the Trademarks Act 2010 deal with trademark infringement. The key provisions of these sections are as follows:

1. Section 36 provides that the registration of a trademark in Part A of the register gives the owner exclusive rights to use the trademark in relation to goods. The right is infringed if a person uses a mark that is identical or nearly resembling the registered trademark in relation to goods without the owner's consent.

2. Section 37 provides that the registration of a trademark in Part A of the register gives the owner exclusive rights to use the trademark in relation to services. The right is infringed if a person uses a mark that is identical or nearly resembling the registered trademark in relation to services without the owner's consent.

3. Section 38 provides that the registration of a trademark in Part B of the register gives the owner similar rights in relation to goods as if the registration had been in Part A of the register. The right is infringed if a person uses a mark that is identical or nearly resembling the registered trademark in relation to goods without the owner's consent.

4. Section 39 provides that the registration of a trademark in Part B of the register gives the owner similar rights in relation to services as if the registration had been in Part A of the register. The right is infringed if a person uses a mark that is identical or nearly resembling the registered trademark in relation to services without the owner's consent.

5. Section 40 provides that a person is deemed to infringe the right to use of a trademark if they breach a contract in writing with the owner or a permitted user of a registered trademark. The section also outlines the acts that constitute infringement and the conditions under which the section applies.

DEFENCES

In the case of Standard Signs U Ltd v Fred Ogwang T/A Shanarard and Anor, the plaintiff, Standard Signs U Ltd, sought to protect its trademark rights against the defendant, Fred Ogwang T/A Shanarard and Anor. The plaintiff claimed that the defendant was infringing its registered trademark.

The court addressed the exceptions and defenses to trademark infringement, which include:

1.Fair use: The court considered whether the defendant's use of the plaintiff's trademark was fair, taking into account factors such as the purpose and nature of the use, the likelihood of confusion, and the extent to which the use is commercial or non-commercial.

2.Descriptive or generic use: The court examined whether the defendant's use of the plaintiff's trademark was descriptive or generic, and therefore not protected as a trademark.

3.Parody or satire: The court considered whether the defendant's use of the plaintiff's trademark was a parody or satire, and therefore not protected as a trademark.

4. Independent creation: The court examined whether the defendant's use of the plaintiff's trademark was independently created, and therefore not protected as a trademark.

5.License or assignment: The court also addressed whether the plaintiff had validly licensed or assigned its trademark rights to the defendant.

In this case, the court found that the defendant's use of the plaintiff's trademark was not fair, and that the defendant had not independently created the mark. The court held that the defendant had infringed the plaintiff's trademark rights and granted a permanent injunction restraining the defendant from using the mark.

In summary, the court in Standard Signs U Ltd v Fred Ogwang T/A Shanarard and Anor held that:

The plaintiff, Standard Signs U Ltd, successfully protected its trademark rights against the defendant, Fred Ogwang T/A Shanarard and Anor The court addressed exceptions and defenses to trademark infringement, including fair use, descriptive or generic use, parody or satire, independent creation, and license or assignment

The court found that the defendant had infringed the plaintiff's trademark rights and granted a permanent injunction restraining the defendant from using the mark

SURRENDER, REVOCATION,AND INVALIDITY OF A TRADEMARK

In Potomac Tobacco Company Ltd v British American Tobacco Co. Ltd, the court considered the issues of surrender, revocation, and invalidity of a trademark. The plaintiff, Potomac Tobacco Company Ltd, sought the removal of the trademark 'YES' from the Register of Trademarks in respect of all goods for which the trademark was registered.

The court held that a trademark can be surrendered by the owner of the trademark, and that the surrender must be made in writing and signed by the owner. The court also held that a trademark can be revoked if it has not been used for a continuous period of five years, or if it has become a common name in the trade for the goods or services for which it is registered. The court further held that a trademark can be declared invalid if it was registered in bad faith, or if it conflicts with an earlier trademark registration.

In summary, Potomac Tobacco Company Ltd v British American Tobacco Co. Ltd states that:

A trademark can be surrendered by the owner of the trademark in writing and signed by the owner

A trademark can be revoked if it has not been used for a continuous period of five years, or if it has become a common name in the trade for the goods or services for which it is registered

A trademark can be declared invalid if it was registered in bad faith, or if it conflicts with an earlier trademark registration.

PASSING OFF

In Colgate Palmolive v Sombe Supermarket, passing off was defined as a common law tort that occurs when a trader misrepresents their goods or services as those of another trader, causing damage to the goodwill of the other trader

The court found that the defendant had passed off its toothbrushes as those of the plaintiff's brand, and granted an order for the delivery up for destruction of the infringing toothbrushes in the possession of the defendant, as well as general damages, punitive damages, and costs of the suit:

1.Goodwill: The plaintiff must prove that it owns a valuable and distinctive goodwill in the market.

2. Misrepresentation: The plaintiff must show that the defendant has misrepresented its goods or services as those of the plaintiff, causing damage to the plaintiff's goodwill.

3.Likelihood of confusion: The plaintiff must demonstrate that the defendant's misrepresentation is likely to cause confusion among consumers as to the source of the goods or services.- Standard Signs v Shanard

In Vision Impex Ltd v Sansa & Anor, the plaintiff, Vision Impex Ltd, accused the defendants, Sansa Ambrose and Goldman Logistics Import, of passing off their goods as goods of the plaintiff. The plaintiff sought a permanent injunction restraining the defendants from passing off their goods as goods of the plaintiff and an inquiry as to damage. The court granted a permanent injunction restraining the defendants from passing off their goods as goods of the plaintiff and an inquiry as to damages.

Remedies

Civil remedies for passing off under Section 79 of the Trademarks Act 2010 include:

1. Injunction -Guangzhou Tiger Head Battery v Milly Nakanjako

2. Damages:

3. Account of profits

4. Delivery up and destruction of infringing goods or materials

5. Costs

6. Anton Piller Orders - Anton Piller KG v Manufacturing Processing

Written and Authored by

Byaruhanga Joshua Morris , A Finalist at Uganda Christian University Mukono Campus , pursuing a Bachelors of Law

You can access this paper on our linkedIn below below

Twitter - @JoshuaMorris728

Gmail - Joshmorris728@gmail.com

Linkedin - @Byaruhanga Joshua Morris

Contact - 0782574416

Lawpoint Uganda

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