Tuskys V Tusker

Tuskys V Tusker

By Asiimwe Paul   Wednesday, March 30, 2011   No comments:

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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Trademark Act Finally assented to in Uganda

Trademark Act Finally assented to in Uganda

By Asiimwe Paul   Monday, August 30, 2010   No comments:

The good news for owners of service marks is that the President has finally assented to the Trademarks Act 2010.

This is of great significance because Uganda has been the only country in the East African region that did not provide specific protection for service marks. This should give businesses operating in Uganda a greater sense of confidence. Secondly, as Uganda is second only to Rwanda in terms of being a liberal economy, this will encourage service related franchises. Thirdly, this is one step further in enhancing Uganda's business environment, as reviewed from time to time by entities such as the OECD, World Bank and private agencies such as the Economist.

It goes without saying that passing of this law and full implementation of this Trademarks Act will also reivigorate the fight against counterfeits in Uganda. The question that arises then is, if you have a trademark act that provides sufficient civil and criminal remedies, what purpose does the Anti counterfeit Bill serve? Comments are welcome.

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Photocopying licences come to Uganda

Photocopying licences come to Uganda

By Jeremy   Monday, April 12, 2010   2 comments:

"Body to charge licences for photocopying books" is the title of an email received by Afro Leo from Consent (the Consumer Education Trust, Kampala), referring to an article in New Vision Newspaper last week by Taddeo Bwambale.

The article explains that Ugandans will be paying licences to photocopy published works once a new body, the Uganda Reproduction Rights Organisation, comes into force later this month. This initiative seeks to promote intellectual property rights of copyright holders and to ensure that authors benefit from their works. Content users will be required to pay an additional fee for photocopying literary, artistic and other works protected under the Copyright and Neighbouring Act 2006. This Act provides for the establishment of a collecting society to promote and encourage creativity in the artistic, literary and scientific fields in Uganda. Money which it collects will be distributed to authors, the amount depending on the average number of copies made of each author's works in a year. The article adds:

"Students in universities and other institutions will be most affected by the measure since most lecturers rely on handouts, which are photocopies from published works.

According to the copyright law, reproducing published works without the licence of the copyright holder or their agent is an offence, which attracts a fine of sh2m, a four-year jail term or both".

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Author sues Government for use of Anthem

Author sues Government for use of Anthem

By Asiimwe Paul   Saturday, September 20, 2008   1 comment:

In what appears to be a landmark case, Prof. George Kakoma has sued the Government of Uganda for copyright infringement and refusal to pay him royalties for the use of his 1962 composition, which subsequently became the National anthem.

According to the plaint recently filed before the High court in Kampala under civil suit 197 of 2008, the plaintiff composed a song in 1962 in tribute to Uganda in response to an advert run by Government. His composition was chosen, in consideration of which he was paid 2,000 shillings (about US$14,200 at 1962 exchange rates). The plaintiff argues that there were no conditions attached to the payment.

Over the succeeding years, the plaintiff sought payment of royalties from the Government for the use of his song to no avail. He tried to interest the state in concluding an assignment of the copyright in the anthem which was not forthcoming. The pleadings state that "the government of Uganda subsequently expressed an interest to have the plaintiff's copyright assigned to it and formally wrote to the plaintiff but no agreement was ever concluded between the parties".

In a nutshell, whereas the government showed an interest in giving some form of financial compensation to Prof. Kakoma for his composition, no payment was actually effected.

As the suit proceeds to hearing, it will be interesting to see how the substantive issues of ownership will be dealt with, as well as whether the court will pronounce itself on the use of adaptations, translations and other expressions of the Anthem. Other issues that are of jurisprudential value are whether a state can be found to have infringed copyright of a national anthem and if so, what kind of permissions would prevent an action for infringement from succeeding. Unlike the Copyright Act, 2006, the 1964 Copyright Act of Uganda which would have applied for most of the period over which the claim applies did not explicitly mention moral rights. Is this or is it not an issue?! Hopefully, the court will address these and more interesting legal issues to come in its judgment.

The plaintiff is seeking the following remedies (paraphrased):
1) A declaration that he is the lawful owner of copyright over the song comprised in the national anthem;
2) A declaration that the defendant is liable for copyright infringement and for inducing the infringement of the said copyright;
3) Royalties for all the previous use of the plaintiff’s composition over a span of 40 years.
4) General damages for infringement of the copyright
5) A permanent injunction restraining the defendant and its agents from further infringing or inducing infringement of the said works.
6) Interest on the above claims at court rate from the date of judgment until payment in full.
7) Costs of the suit.

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