Wednesday, 30 March 2011

Tuskys V Tusker

According to the New Vision newspaper in Kampala,

TUSKYS, a Ugandan Company "dealing in arts and crafts, has sued Tusker Mattresses, a subsidiary of Kenya’s Tusker Mattresses over a trademark" for damages, costs and interest from Tusker Mattresses for denying it the exclusive use of its trademark. Tuskys is also praying court for an injunction "stopping Tusker Mattresses from using the trademark" which according to the company's Managing Director was registered in Class 8 for crafts and arts in 2008.

According to Tusker Mattresses’s Legal Counsel, the renowned IP Lawyer John Magezi, the company registered the logo and slogan “Time to go, Tuskys, your friendly supermarket” in Class 16 in 2009.

According to the New Vision, the defendant company's position is that there is no infringement on the part of his company, since the plaintiff’s trademark covers goods in Class 18 that embrace arts and crafts, whereas the alleged infringement of the trademark is in respect of goods in Class 16, for paper articles, cardboards, newspapers and other printed matters.

This case resurrects some of the issues dealt with by the Kenyan High Court in Matthew Ashers Ochieng –vs- Kenya Oil Company Limited & Kobil Petroleum Limited Civil Case 377 of 2007, as recently analysed by John Syekei and Andrew Ndikimi here. One of the important points made by the court in this case is that "That the protection afforded by trade mark registration in Kenya is class specific." Should the Commercial Court in Uganda be persuaded to follow this principle, the court would then find the defendants innocent of the alleged infringement.

Two issues remain to be pondered though.

First of all, would an application for the word mark "Tuskys" in class 16 by Tusker Mattresses succeeded, even in the presence of a prior registration of "Tuskys" by the plaintiff in class 8? The response to this question may determine whether the parties can still seek a remedy to this problem before the Registrar of Trademarks, under the mandatory Commercial Court Mediation procedure.

Secondly, this case brings back the old and thorny issue as to whether the Company's register should be cross linked with the trademark register. Although the two registers are based on different laws and are different many other respects, it is possible that if some of this information is readily searchable electronically, the parties concerned would be able to minimise the occurrence of some trademark disputes. This may not be of assistance however where the matters at issue involve foreign companies not incorporated in Uganda.

Ultimately, it behoves the Government of Uganda and all involved in improving the business climate in Uganda and brand protection to assist the Uganda Registration Services Bureau in its plans to fully automate the IP registry.

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