To fend off rivals, businesses are heading to court to prevent their competitors from registering conflicting features and identities, Ismail Musa Ladu explains. Uganda Batteries Limited – the renowned automotive battery industry leader, had to secure a court injunction restraining Nile Batteries Limited (NBL) – a new industry player – from manufacturing, selling and distributing its products.
Just a fortnight or so ago, a row over trademark brought to the fore the length at which a business is willing to go to protect its distinct features and identity from infringement.
Uganda Registration Service Bureau (URSB) defines Intellectual Property (IP) as creations of the mind such as inventions; literary and artistic work, designs, and symbols, names and images used in commerce.
Intellectual Property rights, according to URSB, whose role among other things includes registering of patents and intellectual property rights, grants the owner of the work exclusive rights to exploit and benefit from the creation. The intellectual property rights can include copyrights, patents, trademarks, and trade secrets.
To protect the trademark of Uganda Batteries Limited which is the company’s flagship brand, the marketing director of the renowned automotive battery industry leader, Mr Moses Zizinga, in an interview with the Daily Monitor said they had to secure an injunction, restraining Nile Batteries Limited (NBL) – a new industry player – from manufacturing, selling and distributing its products.
According to Mr Zizinga, NBL, the new kid on the block, launched into operation last month in Jinja District by President Museveni, had done enough damage in terms of causing confusion. This translated into losses, compelling the automotive battery industry leader to seek court redress in form of temporary injunction against NBL.
In a May 3 temporary injunction issued by Justice Anna B Mugyeni, NBL was ordered to stop the production, distribution and sale of its batteries until when the main suit is disposed of. This was in addition to the new industry player not issuing warranty cards.
In February, UBL dragged NBL to court seeking to, among others, temporarily stop the company from manufacturing, selling and distributing its batteries under the NBL brand.
The lawsuit, UBL said in court documents, had been informed by deliberate imitation of its battery features by NBL, which is protected from such infringement.
At the heart of the row is the conspicuous spark sign inscribed in the rectangular-like shape on the automotive battery. This according to UBL head of legal, Mr Marvin Mulinde and Mr Zizinga is a patented trade mark sign of UBL. Several other product features such as the design, shape, logo, and size of NBL flagship products are also identical to those of UBL. This according to UBL senior managers can easily make it possible for customers to be duped into buying undesired products.
Daily Monitor investigation indicated that NBL was denied the very trademark on the ground that it already existed in the registrar.
In a February 15 letter seen by Daily Monitor, Ms Maria Nyangoma, the URSB registrar of trademarks, declined to grant Nile Batteries a trademark, noting that the application bore similar features with an already existing trademark, which was bound to cause confusion in the market.
Then there was Java House versus Café Javas.
Kenya’s coffee shop chain Java House ended up in court on allegation of infringing on the trademark of a competitor, Café Javas.
Java House emerged victorious after a High Court ruling on February 9, 2016, compelled the Registrar of Companies to allow registration of the trademarks Java House, Java Sun and Nairobi Java House.
The URSB had rejected the registration of these trademarks after Mandela Auto Spares – owners of Café Javas – filed an objection.
URSB rejected the registration on the grounds that with entry of the Nairobi Java House in the market, it would lead to confusion by members of the public.
Java House appealed the decision and Justice Christopher Madrama Izama ruled in their favour.
These two cases are a testament to the legal battles that businesses are prepared to fight to protect their IP rights.
URSB senior public relations officer, Ms Provia Nangobi said since enforcement unit started operations in March 2017, about 130 cases have been handled as of April 24, 2019.
She said: “Intellectual Property (IP) related ones are 90 in number. About 70 of those cases are trademark related and 20 are about copyright and the rest of the cases are regarding URSB related matters.”
Experts speak out
In an interview on Thursday last week with Mr Robert Kirunda, a legal expert, it emerged that IP cases are rising fast going by numerous litigations, some of which touch on relatively new issues such as image rights.
Intellectual Property rights and all its forms, about eight in number, according to Mr Kirunda, means so much to the businesses, explaining the great length many of them are willing to go to protect their IP rights.
“There is a lot of investment that has been injected into products and brands. It is for that reason that it is protected. For example, e trademarks distinguish goods. So in case of infringement, the consumer may think that he or she is buying your goods yet that is not the case. So that could impact on return on investment,” Mr Kirunda said.
Several experts including Mr James Yang, a Patent Attorney, advises that the best way to protect your idea from being stolen by somebody else is by securing one or more of the four different types of intellectual property (IP) namely; trade secrets, trademarks, copyrights, and patents.
Every invention tends to start out as an inventor’s trade secret. To be on the safe side before inventors market their inventions, he suggest that they secure one or more of the other forms of intellectual property protection – patents, trademarks and/or copyrights.
For Uganda’s case, the problem according to Mr Kirunda, is not the law for it is sufficient enough to deal with the current prevalent forms of IP cases. The biggest worry, he said: “Is the enforcement of the law and not the law.”
A trademark is a distinctive feature that identifies certain goods or services produced by an individual or a company. It may consist of, among others, a word, symbol, design, slogan, logo, sound or smell.
A trademark has to be distinctive, non-descriptive and not likely to cause confusion.
The trademark owner, according to Uganda Registration Services Bureau, has the exclusive rights to prevent others from infringing on it.
Intellectual Property (IP) related ones are 90; 70 of those are trademark related and 20 are for copyright and the rest are other URSB related matters
Copyright law, according to URSB, grants authors, artists and other creators’ protection for their literary and artistic creations, generally referred to as “works”.
The works protected by copyright include, literary and artistic works such as; novels, poems, plays, newspapers, adverts, films, musical compositions, choreography, paintings, drawings, photographs, sculptures and architecture, maps, technical drawings and Computer software, programmes and databases.
According to Ms Nangobi, the law is fit enough to address IP conflicts relating to registration of patents and dealing with issues of trademark infringement as well as copyright breach.
“Yes the law is sufficient,” she said.
She continued: “The Trademark Act gives the owner of the mark the right to protect their brand and exclusiveness to use it. Anybody who uses your IP without your permission infringes on your rights. IP Rights are territorial in this nature and once you infringe on ones IP, the law gives you remedies.”