When setting up a Safari lodge or any accommodation facility in Uganda’s tourism and hospitality sector, important things to have in mind are name selection, Trademarks and the laws relating to trademarks. The Uganda Registration Services Bureau (USRB) provides for research on the name to be used for a particular business entity or organisation so as to avoid conflict of interest on intellectual property. This article highlights and guides would be potential Entrepreneurs and Accommodation establishment owners operating already under the private sector in the Pearl of Africa on the legal issues pertaining Trademarks in Uganda.
Trademarks in Uganda are protected under the Trademarks Act, 2010 that is the law relating to trademarks, registration thereof, their duration, effect of registration and action for trademark infringement. The primary function of a trademark is to distinguish the goods and services of one proprietor from those of another. Trademarks are a regime of intellectual property that are granted by virtue of registration. Trademark statutes have always guarded against business men who attempt to adopt marks which others in the same nature of business are more likely to use generally or descriptively, and so they may encounter objections, conditional acceptances or rejections at substantive examination of the marks.
Trademarks in the travel or hospitality business have been litigated in Uganda as seen in the case of Kyaninga Estates Limited V Kyaninga Royal Cottages[1]. The difference between word marks and logos was one of the main issues of contention in the Kyaninga case. In this case, the plaintiff and Respondent in the Application, according to the judgment on page 10, sought to protect the words, “Kyaninga Elegance at its Peak”. The judgment stated that the words are not distinct in their character. The judgment referred to a dictionary search of the words to mean they are commonplace words in the English language. This illustrates that Courts may rely on dictionaries or usage by customers or any other source to perceive a term’s meaning.
Although commonplace words may be distinctive, it can only be when they communicate a meaning that is specific in relation to the products used. According to the judgment, the combination of “Kyaninga and “Elegance at its peak” is that of a geographical name and English words and so Kyaninga lodges according to the judgment had failed to demonstrate any right protected by law and consequently no violation by the Applicant to warrant trademark infringement. According to the judgment, the words were not shown to be adapted to describe a distinctiveness in the provision of hospitality services.
[1] HCMA No. 808 0f 2018, arising from High Court Civil Suit No. 866 of 2018
In Uganda’s travel and hospitality business, it has no doubt become common that business owners acquire trade names that are adopted from the area the business is located such as a safari lodge near a lake, river or mountain. From the above, the key points for a trademark proprietor in the hospitality business is to ensure the tradename is not adopted to the geographical location or a physical feature, as it may be difficult to seek trademark registration. The word Kyaninga is not from the English language but trademarks law is jurisdictional and so it is vital to restrict the interpretation to dialects in Uganda except where the audience may be considered a negligible minority or the connotation has another meaning to a small percentage of the population.
In assessing whether a mark is a geographical word or whether it is generic the mark is referenced as a whole and not just a section of the words registered. It is taken that the depiction of the word or log as registered is what the trademark proprietor is seeking protection for. Still, the eligibility for registration, is being able to achieve the function of a trademark- that it is capable of distinguishing the goods or services of one undertaking from those of another undertaking. For section 9 of the Trademarks Act, 2010, in order for a mark to meet the distinctiveness of registration, a mark has to be able to direct a customer towards the origin or the manufacturer of those goods. For those who are claiming ownership for geographical words, they have to be able to demonstrate that the registered mark has become the generic name of those goods and services. It has acquired another meaning and the customer’s perception demarcates the term’s new meaning. In the hospitality business, it has to signify to customers or travellers the particular services such as the lodge or hotel. Then, if it is not generic to customers it can be taken that it has ceased to be a generic word. However, this tested is applied either in courts at litigation or at examination of the desired mark for registration by the Registrar of Trademarks.
Thus, combining a geographical word with the nature of the business yields a generic composite and the statute disallows such a registration. The rationale behind section 9(d) and the judgment in the Kyaninga case is that a geographical name only provides the business man with a name that is already attributed to another meaning in parlance. Trademarks may have the function of distinguishing good or services but they also serve the purpose of preventing one trader from appropriating for its own exclusive use a terminology that is already used by others to describe that geographical location.
This will preserve geographical names from being adopted for exclusive use as the term is already being used to identify something. A generic term is not eligible for use as a trademark if that particular term in priority is already being used to refer to a geographical feature. In addition, it closes out a competitor or someone else who would desire to adopt the name of that geographical feature to their business and also obtain some of the perceived commercial benefit that may accrue to the name.
For those in the hospitality business, it may be attractive to adopt the name of a nearby geographical feature and so it is important to be alert to this rule of trademarks law so as not to cause confusion, lose out on exclusivity of a name or lead to future litigation. Additionally, a mark may be unable to escape this rule by combining the geographical word with another generic term such as “hotel” or “haven”. Courts will still determine whether the combination is eligible for registration and that addition of another word to grant it designation does not confer distinctiveness and right to exclusivity because addition of this word is merely a necessary component to the business or its scope. It still remains descriptive of the nature of business that the business owner is operating.
Terms that refer to geographical features or are generic should remain free for the common parlance. For those in the hospitality business, they should be alert to use of geographical names and subsequently seeking trademark registration for the same. These words have already been adopted to identify a physical feature and so assuming them for one’s business would mean creating a monopoly that excludes other traders in similar business who may desire the same advantage and for the public it dismisses their previous use of the word.
This article is an extract from the Origo Advocates Intellectual Property knowledge series. To view the full article, click this link: https://origolaw.ug/the-case-of-kyaninga/
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