As business owners, our dream/goal is to build a business brand that lasts for a lifetime, speaks for itself and has an identity. An identity in business is extremely important as the entity is easily identifiable among its customers but the goods or services it offers must also be identified or associated with it.
BUSINESS IDENTITY/COMPANY REGISTRATION/BUSINESS NAME
In Uganda to operate a business you are required to register a business name under section 2 of the Business Names Registration Act or register /incorporate a company under the Companies act 2012.
WHAT DOES COMPANY AND BUSINESS NAME REGISTRATION OFFER?
- A company name upon registration creates a legal entity for undertaking business in Uganda and another person cannot register a company in the same name in Uganda.
- A business name makes your business identifiable just like how a name provides a unique identity for everyone, however registration of business name does not guarantee protection.
What usually happens with most business owners is that they will register a company, then register a business name/trade name without trademarking the company name, the logo and business slogan if any.
For example, a business owner named x registered a company called café chateau Ltd and a business name under name and style koodi foods and registered a logo as represented below.
In this case when you search the business name registry all you find registered is koodi foods as a word, but the logo which is represented by the 'leaves' above the word koodi and the slogan 'great food for life' are not protected by the business name registration.
What the above means is that another person say y can register koody foods with maybe 'y' at the end as a trademark, with businesswoman x logo as a trademark to ride on the clientele of businesswoman x as seen below.
THE QUESTION IS CAN BUSINESSWOMAN X STOP BUSINESS PERSON Y FROM SELLING GOODS OR TRANSACTING USING THE COPIED LOGO SUCCESSFULLY.
If business woman x is has just started business her chances of stopping y are slim because;
- She only registered the name koodi foods without the logo and the slogan
- If she sues or takes y to court she can only sue under passing off for which, legally she would have to prove that her business name has become so popular and is known country wide which might be confused with that of y, and as an enterprise that has just started, this might not be possible to attain.
It suffices to note that whereas a business name identifies and distinguishes the business as a whole from other businesses, a trademark distinguishes goods or services of one undertaking from those of another undertaking.
WHAT IS A TRADEMARK?
- A trademark can be a word, sign, phrase, design, symbol, slogan, color, label, smell, signature, letter, logo or a combination of the above which identifies and distinguishes goods and services of an individual or a company as per section 1 of the trademark act.
- Or a combination of the above elements that is to say a logo accompanying a business name e.g., adidas logos,kfc etc.
It must be understood that the trademark of a business extends to colors, logos, and most often slogans with which it markets itself. indeed, consumers tend to associate such features to the name so that without them, suspicions may arise as to the authenticity of the name.
WHY REGISTER A TRADEMARK? OR WHY YOU SHOULD TRADEMARK YOUR COMPANY NAME, LOGO OR BUSINESS NAME.
Much as registering a trademark is not mandatory, it provides several legal and competitive advantagesas seen below;
- A trademark is like property and just like a property owner it gives the trademark owner exclusive right to use the registered mark on the goods and/or services for which it?s registered. [section 36 (1) of the trademark act]
- AN Owner of a trademark can sue for infringement of his Trademark if someone else uses the same or a similar mark on similar goods/or services which the mark is used.
- Helps the business owner to stand out in the markets and prohibits others from capitalizing on any enterprises? good will which as business which should jealousy protect.
- Distinguishes a product of one trader from that of another.
- A trademark being property can be sold specifically if it has gained good will or can be licensed.
- Business name is only limited to Uganda yet trademark can be protected internationally, trademark affords an entity immense potential for expansion beyond boarders.
- Trademark protects the name together with the logo, symbol well as the business name only protects the name.
With a registered trademark you can open up a franchise in another country like Kenya by virtue of a license, e.g., the popular trademarks like KFC, JAVA HOUSE OF Kenya, MacDonald's all these are by virtue of trademarks.
ILLUSTRATION OF CASES OF TRADEMARK INFRINGEMENT
Many local and international brands have been infringed upon but due to registration of their brands as trademarks, they have emerged successful as seen below;
In the Ugandan case of Vision Impex Limited versus Sansa Ambrose and anor (commercial division) 2013.
Vision impex the registered owner of ABC 'feathers' sanitary pads as the trade mark. on or about 29th day of May 2013, Sansa Ambrose and Goldman logistice import and exports imported a consignment of 'featlhers' and with this, vision impex sued them in courts of law stating that the brought sanitary pads by Sansa and Goldman logistice import and export were to mislead the public as goods from vision impex and this was to cause loss and damage to their business.
In the judgement, the trial Judge entered judgement in favor of vision impex basing that the trade mark question was for vision impex and therefore had exclusive right or title to use the same and these were awarded general damages of 50,000,000 shs.
In another celebrated case of Adidas-America, inc v Payless shoe source, inc 529 f. supp. 2d 1215 (d. or 2007)
Adidas sued payless for having copied its ?three stripe mark? and superstar trade dress which it uses on numerous products. payless had made footwear bearing ?two stripes,? so similar to those of adidas. in arguments before court adidas showed that it had invested a lot in creating the ?three stripe mark? and that it formed part of its logo hence the products of payless where so similar to their product and this was to cause confusion easily in the consumer?s mind which had indeed arose. adidas obtained a judgment in its favor and was awarded $ 187 million us dollars.
WHO CAN REGISTER FOR A TRADEMARK?
- An individual
- A company -can own several trademarks
Even if registering a company name or business name prevents another business owner from using your business name, the claim/suit can only be brought under passing off which legally you will have to prove that your business has acquired good will and is so widely known, that no other person should use the name, which is very difficult for startup businesses to achieve or prove or to have, well as if you register your company name or business name with its logo as a trademark being that it?s property, it gives you exclusive right to use it and you can sue for infringement whether you are a startup business and have not attained good will as yet.
CAROLYNN KINTU BAINOMUGISHA,
Muwema and Company Advocates18 August 2022