A CASE STUDY
In August 2022, the Commercial Division of the High Court in Kampala rendered a decision on the contentious issue of whether a company name registered in Uganda before a trademark owner can amount to trademark infringement.
In the case of Intel on Intel, the plaintiff, Intel Corporation was founded in 1968 by two pioneers in the semiconductor industry. They adopted the ‘dropped e logo’ as a trademark in that same year and first registered its INTEL trademark in class 9 in the US in 1972. The same mark was registered in Uganda in 1999, and subsequently in class 42 in 2011.
The defendant, INTEL Computers Limited was incorporated in Uganda in 2002 and used the name INTEL in its company name, as well as using the dropped ‘e’ INTEL logo on its storefront. The defendant deals in computer equipment, repair, software installation and networking services.
INTEL Corporation sued the defendant for trademark infringement based on sections 36 and 37 of the trademarks act 2010 and sought orders directing the defendant to change its company name to one that does not incorporate the INTEL mark. The defendant argued that it registered its company in good faith and that there is no likelihood of confusion between its company name and the business it does, with that of the plaintiff.
INTEL Corporation presented evidence showing that the INTEL trademark is its primary trademark which it uses on or in association with virtually all aspects of its business, including products, services, packaging, communications, social media and advertising. The plaintiff also was not merely a microprocessor company but a multi-faceted business spanning health, computers and other areas which due to the internet are inter-connected. Further evidence was given to show that the use of the INTEL word in the defendant’s storefront with a dropped ‘e’ logo amounted to infringement, as it is a copy of its dropped ‘e’ logo. The plaintiff argued that the use of the defendant’s name INTEL Computers increases the likelihood of confusion as it is descriptive of the plaintiff’s field of operation.
The defendants argued that there was no trademark infringement because they had conducted a company search and found the name INTEL Computers was available for registration as a company, after which it was incorporated. There was a further argument for the fact that their core area of business is a provision of computer repair services which they began many years before the plaintiff registered its trademark in class 42 for computer-related services.
According to the defendant, there is no conflict between the parties’ interests as the plaintiff’s trademark was registered for the protection of goods and only much later did they file for trademark protection for services, after the defendant had registered their business. Lastly, the defendant claimed that over the 9 years it has been in existence, it has gained substantial goodwill and recognition in the repair and installation of software for its small-scale consumers.
The court decided in favour of the defendants that the use of the word INTEL and the dropped ‘e’ logo did not amount to an infringement on the part of the defendants.
“ The designer’s role in the development, application and protection of the trademark may be described as pre-creative, creative and post-creative.”Lester Beall
It would be undone if we analysed this case without properly understanding what a trademark is and what would constitute an infringement thereof. A trademark is a legal protection given to any word, name, symbol, or design that is used to identify the product of one manufacturer from another. With the rise of businesses, a trademark helps a layman identify one product from another. The commonest example of this is Coca-Cola. Its trademark helps us distinguish it from other sodas. The value of a registered trademark is not limited to the name alone but extends to other parts of a company’s brand, for example, the shape of a Coca-Cola bottle is trademarked to its brand.
What amounts to the infringement of a trademark?
Once a trademark is duly registered, it confers particular rights upon the owner thereof including the right to prevent unauthorised use of that trade mark by third parties concerning the goods or services specified on the register. A third party may use an identical mark on similar goods and services as in the case above, however, for an infringement to be established, it must be shown that:
This argument was argued by the plaintiff and to establish the above criteria the following factors, the court will take into account the following factors;
We beg to disagree with the court’s decision in the case, especially given that the use of a trademark should extend to all kinds of commercial recognition. The trademark INTEL is used widely in Uganda given the fact that close to 80% of computers operating within our borders run on INTEL processors. The defendant’s use of INTEL in their company name and their storefront is bound to cause confusion that the plaintiff feared given that the defendants are in the same line of business. The adoption of the dropped ‘e’ logo also amounts to an infringement of the plaintiff’s trademark. The use of the dropped ‘e’ logo may not have been as innocent as the defendants argued.
This case overall sets a bad precedent in regards to the infringement of trademarks.
We have all heard of trademarks being part and part of intellectual property but understanding what they mean is another story.
A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company from those of other enterprises. This could be a sign or mark that includes any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically.
The essence of this is to help a consumer or any customer easily identify a product. For example, when you see an apple with a single bite, there is no question in your mind that you are looking at a Mac product. The beauty of a trademark is its distinctiveness. A trademark should be non-descriptive and not likely to confuse. When a person registers a trademark, its registration confers exclusive rights to the owner to prevent others from using the same or confusingly similar mark.
As you start your business or invention, you may be wondering why it’s necessary to create a trade mark for yourself. After all, you already have a business name. Creating a trademark for oneself carries the following benefits:
Any person or corporation who is the owner of a mark used, or proposed to be used, by him in Uganda, may make an application for the registration of a mark in Uganda. Such a person must first search to ascertain whether the trademark exists in the register upon payment of a prescribed fee.
A trademark application is then filed upon payment of application fees. The application should contain the mark proposed to be used, the class of goods or services, the name, address and the signature of the applicant. Where the applicant is a foreign company/person, a power of attorney (simply-signed) or Form of Authorization to an Agent, who must be an advocate of the High Court of Uganda, is required. The filled application is then filed at the Trademarks Registry.
The application is examined by the Registrar to determine its inherent registrability and conflict with prior existing registrations and or applications. Where the application is accepted by the Registrar of Trademarks, the application is then advertised in the Uganda Gazette for 60 days. If there is no objection after the expiration of 60 days of the advertisement, the Registrar shall upon payment of the prescribed fee by the applicant enter the trademark in the register and issue a certificate of registration. A separate application is required for each class of goods.
In Uganda, a trademark is valid for seven years from the filing date of the application and may be renewed indefinitely for successive ten-year periods upon payment of the prescribed renewal fee.
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