THE CASE OF KYANINGA (“4 star”) V KYANINGA (“3 star”):
IS THERE AN INHERENT CONFLICT BETWEEN LOCAL
CONTENT, LOCAL TOURISM AND
INTELLECTUAL PROPERTY IN UGANDA?
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The trading names of upcountry Safari
lodges in Uganda have become
synonymous with the names of either
local tourist attractions or geographical
locations. This is by no means an
attempt to take away the heritage of
the local attraction but a calculated
marketing plan to provide more
visibility to the tourist attractions, which
in turn brings more tourists to the
facilities. However, this has sometimes
come with serious contention whenever
another accommodation facility tries to
take advantage of the same local name
and goodwill attached to the name
notable among which is the case of
Kyaninga Lodge and Kyaninga Royal
Cottages Limited. Other notable lodges
using geographical names include:
Mweya Safari lodge, Chobe lodge, Paraa lodge, Kyambura Gorge Lodge to
mention but a few.
Generic terms are those that relate to a
characteristic or definition that is
general to a whole class or group. The
traditional purpose of a trademark has
always been to be able to distinguish
the goods or services or one
manufacturer from those of another.
However, in modern times, many
businesses in different industries have
since adopted the use of basic words
that were once in common parlance
and these according to the respective industry have then adopted a new
meaning. The subsequent objections
have then been for the ineligibility of
broad or generic names for trademark
registration.
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. The Trademarks Register is
kept electronically and contains
everything about the life of a trademark
and what is not registered is not
protected. Marks that are similar to
ordinary words are construed to be a
springboard for confusion and so may
be rejected upon registration. This is the
same case for descriptive words or
generic names. 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 counter objections, conditional
acceptances or rejections at
substantive examination of the marks.
Trademarks jurisprudence has evolved
so that it is now possible to have such
marks registered. The grounds of
argument are that a trader in a specific
business may adopt a work that is
generic for it to garner recognitio
n as identifying the origin of goods or
services and then to claim for
trademark protection. The objection to
this is that certain businesses are
assuming common words that belong in the public domain as trademarks
warranting registration.
Generic names may extend to
geographical names, that is words or
names that are used in reference to a
geographical location such as a town,
city, river, mountain or lake.
In connection to the function of a
trademark that is to distinguish good or
services of or undertaking from those of another, it may be argued that marks
that portray a geographical origin can
be distinctive.
According to section
9(d) of the Trademarks Act, 2010, a
mark has the distinctiveness character
requisite for registration in Part A of
the Register when it is a word or
words having no direct reference to
the
character or quality of the goods or
services, and not being according to
its ordinary signification, a geographi-
cal name or surname. This means that
words that may form a trademark
should not be in relation to a
geographical name.
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.
A generic name may be distinctive if it
has adopted a new meaning to
customers and has thus ceased to be
generic. The crux of the matter is for
customers to in fact perceive the term
as originating from the proposed
trademark proprietor. Generic names
are so only if that is the meaning it
connotes to customers. This salient
feature applies similarly to geographical
names under the Trademarks Act, 2010.
For customers, the mark has to signify
or identify the services of the proposed
trademark proprietor. The benefit of a
trademark is to attach the goodwill of
the business and protect the ability of
customers to distinguish the trademark
proprietor among many other
competing producers. A customer
should be able to identify the desired
goods or services in the market place.
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 in
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.
It is important to make a distinction
between word marks and logos.
A trademark according to the
Trademarks Act, 2010 is defined as a
sign or mark or combinations signs or
marks capable of being represented
graphically and capable of
distinguishing goods or services of one
undertaking from those of another
undertaking.
At registration, one may opt to register
a word mark or a logo. With a word
mark, the Applicant seeks registration
or words or letters only. This means
that the combination of words or letters
is what is registered. There is no
concern for the graphical
representation of the letters. The main
advantage of this is that upon
registration it offers wider protections
as the words are protected regardless
of the manner in which they are
depicted. With a logo mark, it is a
graphical representation of the word
mark and may combine colours, fonts
and font sizes. The brand name may be
incorporated in the logo. However, with
a logo a trademark proprietor has to
use the logo in the format that it is
depicted and a change in use may
mean call for another trademark
registration as this has created a new
mark. Some may argue that this was the
crux of the matter in the Kyaninga case
as the trademark registered was for
“Kyaninga Elegance at its peak” while
the Defendants only adopted the word
Kyaninga from the trademark.
A word mark may be generic,
descriptive, suggestive or a phrase and
still acquire the character of
distinctiveness. A mark may also be
inherently distinctive, where it has no
other meaning in language and is purely
invented. This is also provided for in
section 9(c) of the Act. But for a
generic word to be registered, it must
connote such a meaning to the
customers in that nature of business
and thereby have acquired a another
meaning or acquired distinctiveness
over time.
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.
The distinctiveness character which
makes a mark capable of registration in
Part A of the Trademarks Register was
one of the grounds of contention in the
Kyaninga case. The argument was that
the meaning of the word Kyaninga is
not just a reference to the lake near the
lodge but that in the hospitality busi-
ness the word has acquired another
meaning and thus it has met the distinc-
tiveness requirement.
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.