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 companies. It may consist of any word, slogan, logo, sound, smell, color, label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically. A trademark has to be distinctive, non-descriptive and not likely to cause confusion. The trademark owner has the exclusive rights to prevent others from using the same or confusingly similar mark
In the case of AD 2000 Trademark  RPC 168 at 173 the court expressed the view that “a sign is capable of distinguishing even if it is ‘only capable’ to a limited extent of being ‘not incapable’ of distinguishing goods and services of one undertaking from those of other undertakings.
The High Court in Uganda recently expounded on this view in Civil Suit No.97 & 290 of 2015 vide PENTECOSTAL ASSEMBLIES OF GOD LIMITED Vs PENTECOSTAL ASSEMBLIES OF GOD LIRA LIMITED AND UGANDA REGISTRATION SERVICES BUREAU before the HON. JUSTICE SSEKAANA MUSA whose ruling was delivered on 1st November 2019.
BRIEF BACKGROUND OF THE CASE
On the 6th January 1999 the plaintiff was duly incorporated as a company limited by guarantee and to further protect its interest, the plaintiff registered a trademark in Part B the trademark register in respect of the name “Pentecostal Assemblies of God Limited’ On the 17th day of February 2014, the 1st Defendant incorporated a company in the name of Pentecostal assemblies of God Lira Limited. On the 15th day of August 2015, the plaintiff wrote to the 2nd defendant and requested it deregisters the 1st defendant on grounds that the 1st defendant had incorporated a company bearing similar names to that of the company and was likely to cause confusion to the public. The matter failed to be resolved amicably and the plaintiff instituted a civil suit against the two defendants for among others the unlawful and tortious infringement of the plaintiffs trademark.
The learned justice held that ‘’as a first time owner of the name the plaintiff had every right to register a trademark to protect its name and the Registrar Of Trademarks was justified in effecting the said registration.”
The honorable justice further went on to refer to the case of AD 2000 Trademark and stated that courts have given “broad interpretation to capable of distinguishing” under this broad interpretation a sign is capable of distinguishing a sign’s capacity to distinguish may be negative requirement that its ‘not incapable of distinguishing’ as opposed to a positive requirement that it ‘can distinguish.’ The plaintiff has decided to distinguish its services under the brand name of “Pentecostal Assemblies of God” at least in Uganda it is their distinctiveness that distinguishes them from other people in the similar religious business through their trade mark. It is therefore capable of distinguishing them differently at least in Uganda or Lira where they are operating from.
The registration of “PENTECOSTAL ASSEMBLIES OF GOD” as a trade mark of the plaintiff was lawful.
The broad interpretation the courts have given as discussed above make the registration of a trademark all the more relevant to a business. The standard of “ not being incapable of distinguishing” gives a wide interpretation and therefore ensures a good amour on the unique name of a business in that anything that comes close to being similar to it is rendered an infringement.
It also gives the owner of a registered mark a right to sue for infringement of his registration if someone else uses the similar mark.
In short a trademark is an amour every business should have to protect its uniqueness and its benefits extend to the consumers of the product and services as it prevents the confusion that could have arisen from similar names, marks etc of business.