John Doe decides to open up a fast-food restaurant in a town suburb. He
puts a lot of effort into the design and lay-out of the restaurant from color
settings on the walls and tiles to arrangement of dining furniture and reception.
The general ambiance is designed to perfection and, indeed, many agree that it
has a huge role to play in the attraction of large patronage. John Doe rakes in
huge profits as a result, until a few more restaurants start opening up down
the street and in other parts of the locality. The newer restaurants are of
inferior quality. Problem is, however – they have all copied the layout of his
own business. Has his branding right been ripped off? The more accurate issue is whether trade
dress can suffice as a claim in Ugandan Trademark law where the copycat
syndrome thrives deeply in the commercial industry.
John Doe’s story is a common experience amongst many start-up businesses
in Uganda. They all fall victim to copycat businesses due to the limited level
of innovation in the country. Most people are inclined to copy something else
that is already out there and thriving rather than start something of their
own. It becomes a case of unfair competition but does the victim legally have a
case against the culprit(s)?
What is referred to as a “trademark” in the legal sense, is looked at
as “branding” in the business sense. So, in effect, it is not just about the
sign or mark on the product or service, but how well you can establish an
identity for yourself so as to be associated as the source of a product or
service. It is therefore unfortunate that the present (and fairly new) Trademark
legislation in Uganda (Act No. 17 of 2010) does not have an adequate answer for
situations where the concept and feel of one’s business is copied by another. Section
4, for instance, only provides for the protection of a sign or combination of
signs. On the other hand, however, it is this concept and feel that applies to trade dressing as part of trade
mark protection.
This problem is also heighted further by the fact that in jurisdictions
in which trade dress protection is recognized, Courts have battled with
deciding upon such verdicts. In the United States, for instance, there is no
clear-cut position on trade dress protection. It has been argued in some
Federal Court cases that a trade dress item which focuses on the image of a
business, i.e the entire look and feel of a business or a service (product
design and packaging) is purely functional in the sense that it is an essential
part of the business that cannot be done away with in order for the business to
function – as such, trade dress protection cannot be accorded to a particular
individual. Protection of the trade dress would therefore have to go beyond the
functional aspects of the product or service. On the contrary, other U.S. Courts
believe in protecting the investments that have been put into creating the
Trade dress and preventing unfair competition. As such, some of the judgments
from these Courts have been in favor of Trade dress protection. Nonetheless, in
deciding over trade dress protection, U.S Courts have also faced the challenge
of making out a difference between product
design and product packaging. In
other words, if a restaurant owner seeks trade dress protection, is it so as to
protect his attraction of customers who like his restaurant for the layout of
the restaurant or those who like it because of the quality of the food?
Courts in the United Kingdom, on the other hand, have not directly
addressed Trade dress but have instead passed judgment on matters affecting “passing
off” of products or services under trade mark infringement, which are injurious
to the reputation of the claimant. This is closer to the provision under
section 35 of the Ugandan Trademark Act which creates a claim against passing off of goods or services. This
provision, however, does not address the copycat syndrome experienced in the Ugandan
economy.
One would argue therefore that our local Ugandan investors that thrive
on copying existing businesses cannot and should not be labeled as infringing
on any trademark laws – or trade dress for that matter, probably on the premise
that they are not using similar signs for their products or services. However,
it should also be considered that some of the customers that visit the copycat
business may be inclined to believe that it is a branch or extension of the
original business. The likelihood of confusion is thus established in this way
and negatively affects the original business in terms of reputation and unfair
competition. Now, is n’t this what Trademark law is meant to address?
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