[2025] UGHCCD 18

### **THE REPUBLIC OF UGANDA**

### **IN THE HIGH COURT OF UGANDA AT KAMPALA**

### **CIVIL DIVISION**

#### **CIVIL SUIT NO. 262 OF 2022**

**AFROLUDO LIMITED::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::PLAINTIFF**

### **VERSUS**

# **1. UGANDA REGISTRATION SERVICES BUREAU::DEFENDANTS 2. ERIC NYAKUEIZABO T/A NYEGE NYEGE MUSIC FESTIVAL**

#### **BEFORE: HON. JUSTICE SSEKAANA MUSA**

### **JUDGMENT**

The Plaintiff is the organizer of the music festival named *"Nyege Nyege"* which has gained international fame as a premier music entertainment event for Uganda thus being dubbed Nyege Nyege International Music Festival.

Upon incorporation, the Plaintiff applied for registration of a trademark in respect of the mark "Nyege Nyege International Music Festival" and its associated typography on 11th July 2019 but the same was rejected by the 1st defendant for being contrary to law and morality.

The 1st defendant however registered the business name *"Nyege Nyege Music Festival"* in the names of the 2nd defendant one month after rejecting the plaintiff's application and while the plaintiff was still contesting its decision. The 2nd defendant has never organized a single music event or operated any business under the said name.

The 2nd defendant filed a counterclaim against the plaintiff for alleged fraudulent and illegal use of his purported business name. He also sought

inter alia a declaration that he owns the business name Nyege Nyege International Music Festival and an account of the plaintiff's earnings from its alleged use. The plaintiff denied all these allegations in its reply and contended that the 2nd defendant registered the said business name in bad faith, with the malicious intent to blackmail and extort money from the plaintiff. The plaintiff prayed that the counterclaim be dismissed with costs.

The plaintiff challenges the actions of the 1st defendant for rejecting their application for a trademark of the name '*Nyege Nyege*' yet registering the same as a business name which allegedly benefitted the 2nd Defendant.

The Plaintiff sought the following orders;

- a) An order that the Plaintiff is the legal owner of the business name *"Nyege Nyege International Music Festival"* - b) A declaration that the refusal by the 1st Defendant to register the Plaintiff's trademark *"Nyege Nyege"* and subsequent registration of the 2 nd Defendant's business name *"Nyege Nyege Music Festival"* was irrational and illegal. - c) An order that the 1st Defendant de-registers the 2nd Defendant's said business name and registers *"Nyege Nyege International Music Festival"* as the Plaintiff's trademark - d) A permanent injunction against the 2nd Defendant and/or any of his agents from any claim or right to use the name *"Nyege Nyege Music Festival"* - e) Costs of the suit.

The parties filed a joint scheduling memorandum in which they agreed on the following facts and issues;

# *Agreed Facts;*

- 1. The plaintiff applied for registration of a trademark in respect of the mark, *"Nyege Nyege"* on the 19th July 2019. - 2. The 1st defendant declined to register the plaintiff's mark *"Nyege Nyege"* on grounds that it connotes to sexual immorality. - 3. The 2nd defendant applied, and the 1st defendant registered the business name *"Nyege Nyege Music Festival"* on the 25th September 2019

## *Agreed Issues*

- *1. Whether the 1st defendant illegally and irrationally rejected the plaintiff's application for the trademark registration of the mark "Nyege Nyege International Music Festival"* - *2. Whether the 2nd Defendant illegally and fraudulently procured registration of the business name "Nyege Nyege Music Festival"* - *3. Whether the plaintiff is entitled to the remedies sought.*

The plaintiff was represented by *Counsel Martin Kakuru* and *Counsel Genevive Akello* while the 1st respondent was represented by *Hellen Bushemeirwe* and the 2nd defendant counsel never appeared in court and he opted to represent himself.

At the trial, the plaintiff presented one witness that is Mr. John Mark Muwangula, the 1st defendant presented two witnesses that is Ms. Charlotte Mudoola and Ms. Sarah Rukundo while the 2nd defendant testified on his behalf. The parties filed a joint trial bundle and also filed final written submissions that were considered by this court.

# *Determination*

*Whether the 1st Defendant illegally and irrationally rejected the Plaintiff's application for the trademark registration of the mark "Nyege Nyege International Music Festival"*

The plaintiff contended that they had applied for registration of a trademark of the now famous and popular mark "Nyege Nyege" in its associated typography. The 1st defendant informed the plaintiff that the application had been rejected because the word "Nyege" was contrary to law and morality and constituted a scandalous design for its translation as sexual arousal in the Kiswahili language.

However, the 1st defendant then permitted the registration of the business name "Nyege Nyege Music Festival" even though the defendant had never organized a single event under the same name. The plaintiff contested this and requested the 1st defendant to deregister the 2nd defendant's name or register the Plaintiff's mark but the 1st defendant contended that it had the power to reject the mark for being scandalous under the Trademark's Act but determine the same permissible as a business name under the Business Names Registration Act.

The 1st defendant justified registering the 2nd defendant's name "Nyege Nyege Music Festival" as it connotes a music festival while the Plaintiff's mark "Nyege Nyege" connotes sexual immorality and as such there was no compelling reason to deregister the 2nd defendant's name. The 1st defendant further contended that the prescriptive and laudatory test applicable to trademarks did not apply to business names.

In their submissions, the plaintiff argued that the 1st defendant's double standards in rejecting their trademark application for being scandalous but allowing the 2nd defendant's business name registration yet they bear the identical words defied logic and could only be termed as unreasonable. The plaintiff argued that the 1st defendant's Registrar of business names considers morality of the name proposed during registration.

The plaintiff's counsel further argued that the defense witnesses admitted that they had access and visibility over the two registers and their respective directorates. DW1 stated that they would not register a popular trademark like *Coca Cola* as a business name even though it is not registered as a business name which meant that the Registrar had actual knowledge of the plaintiff's application at the time she approved the 2nd defendant's Business name. Counsel submitted that it was therefore highly probable that the 1st defendant's agents having had knowledge of the rejection of the plaintiff's trademark acted in concert with the 2nd defendant to register the same mark as a business name to defeat the Plaintiff's claim to the same.

With regard to the immoral connotations of the word "Nyege", Counsel argued that the Registrar was wrong in finding that the word meant sexual arousal in the Kiswahili language but did not adduce any evidence to support their decision. PW1 a native Musoga and fluent Luganda speaker stated that the word "Nyege" came from the word "ekinyegenyege" which when translated to English meant a feeling of excitement or an itch to dance or take part in a party of celebration. Counsel argued that the translation and definition relied upon by the 1st defendant in its report relied upon content websites and not standard dictionaries edited and complied by lexicographers hence their contents could not be relied upon as an authority as stated by their disclaimer.

Counsel submitted that the word "Nyege" was not a typical Kiswahili word but rather Kiswahili-English slang spoken in some parts of Urban Kenya. The 1st defendant ignored the more widely spoken traditional languages of Lusoga from which the plaintiff derived the mark and from which it operates its business.

The 1st Defendant on the other hand argued that in rejecting the intended mark "Nyege Nyege" the 1st Defendant examined the said words and through the Google search engine found that they were against morals and contrary to the law and then relied on sections 7(2) (a) and 23 (1) of the Trade Marks Act to reject the application.

Counsel also noted that the application came at the time when the "Nyege Nyege Event "was perceived by the public to be connected to immoral conduct leading the Parliament and religious leaders to discuss the possibility of banning the event. Counsel submitted that it was inevitable to reject the plaintiff's application and the rejection was lawful and tandem with the Trade Marks Act.

# *Analysis*

**Section 23(1) of the Trademarks Act, 2010** states: *The registrar shall not register as a trademark or part of a trademark any matter the use of which would be likely to deceive or would be contrary to law, morality or any scandalous design.*

The 1st defendant found that the mark was against our morals and rejected the application citing that google search showed that the word "Nyege" meant sexual arousal English-Kiswahili slung. However, the Nyege Nyege Festivals take place in the Busoga sub-region where the popularly spoken languages in this are Lusoga and Luganda. In those two languages, *"Ekinyegenyege"* where the festival gets its name loosely translates into the desire to dance.

A simple application of the reasonable man test would show that the 1st defendant ought to have determined the morality of the Nyege mark based on the language widely spoken in the area where the festival is held rather than the imported Google search English-Kiswahili *slung* meaning. The 1st defendant officers were indeed perverted to think that "Nyege Nyege" was an immoral word within the context of Busoga region where the festival takes place. What is scandalous will be a matter of opinion?

According to the report by the European Union Intellectual Property Office for instance, *"Public Policy and accepted principles of morality" are not necessarily identical in all the Member States, due to their linguistic, historical, cultural and social differences. As a sign may have different connotation in the different Member States, it may be perceived to be contrary to public policy or accepted principles of morality only in certain Member States"*

The report further states that *" it is important to assess the offensive meaning of a sign exclusively from the perspective of the relevant languagespeaking public and not make linguistic analogies."*

To determine whether the 1st defendant illegally and irrationally rejected the plaintiff's application for the trademark registration of the mark "Nyege Nyege International Music Festival" we look at *Pastoli vs Kabale District Local Government Council and Others [2008] 2 EA 300* it was held while citing *the Council of Civil Unions vs Minister for the Civil Service [1985] AC 2*

*"Illegality is when the decision -making authority commits an error of law in the process of taking or making the act, the subject of the complaint. Acting without jurisdiction or ultra vires, or contrary to the provisions of a law or its principles are instances of illegality."*

*"Irrationality is when there is such gross unreasonableness in the decision taken or act done, that no reasonable authority, addressing itself to the facts and the law before it, would have made such a decision. Such a decision is usually in defiance of logic and acceptable moral standards…"*

The power to register a trademark is discretionary and must be exercised fairly. Whenever a public function is being performed like that of the Registrar of Companies or Registrar of Intellectual Property Rights, there is an inference, in absence of any express requirement to the contrary, that the function is required to be performed fairly and it should not be at the whims or swing moods of the decision maker. See *Vantage Mezzanine Fund Partnership v Uganda Registration Services Bureau & 4 Others HCMC No. 205 of 2021*

I find that the 1st defendant illegally, irrationally and unfairly rejected the plaintiff's application for the trademark registration of the mark *"Nyege Nyege International Music Festival*.

## *Whether the 2nd Defendant illegally and fraudulently procured registration of the business name "Nyege Nyege Music Festival"*

The plaintiff submitted that the circumstances under which the 2nd defendant procured the registration of the business name *"Nyege Nyege Music Festival"* amounted to fraudulent dealing. Counsel submitted that the plaintiff's Nyege Nyege festivals had been held in Busoga region and had gained prominence for four years before they applied to register their trademarks in 2019. Counsel argued that like most Ugandans, the defendants were aware of the festivals and the fact the plaintiff was the pioneer of the Nyege Nyege Festivals was conceded by the 2nd defendant. Despite this knowledge, the 2nd defendant went ahead to procure the registration of the name *"Nyege Nyege Music Festival"*.

It was counsel's submission that the 2nd defendant did not register the said business name between 2015 -2019 when the plaintiff was holding their annual events but only did after the plaintiff's application for the trademark was rejected with the intent to frustrate the plaintiff's claim to the mark and claim a monetary benefit.

The plaintiff also argued that the 2nd defendant's registration of the name *"Nyege Nyege Music Festival"* also amounted to an attempt to passing off of the plaintiff's business reputation and goodwill as his own.

On the other hand, the 1st defendant argued that the registration was done legally. They argued that when an application to register a business name is made, the Registrar takes the following steps:

- 1. Conducts a search on the Business Names Register to ensure that the name does not already exist on the register. - 2. Confirms in their opinion whether or not the name is misleading under sections 15 and 16 - 3. If the name is not yet on the register and is not thought to be misleading, it is registered as a business name.

Counsel argued that the Business Names Registration Act, Cap 109 which did not require the Registrar to determine the meaning the meaning of the word submitted for reservation of registration and that if a word is to be rejected by the Registrar on grounds of immorality, such rejection may be inspired by the Registrar's discretion and discretion cannot be qualified.

Further that if the framers of the Business Names Registration Act Cap 109 intended for the test of morality to prevail when registering business names, they would have expressly stated it as stated in Section 23(1) of the Trademarks Act. Counsel submitted that it was erroneous for the 1st Defendant to apply tests of name registration under the former law to the latter and vice versa.

Counsel also argued that the Plaintiff did not prove that the 1st defendant was dishonest in their actions nor did it conceal any information in the refusal to register the trademark and the registration of a business name. The 1 st defendant led evidence showing the reasons for the rejection and the registration of the business name was never concealed as all registers maintained by the 1st defendant were accessible to the public upon payment of requisite fees.

Counsel concluded that the plaintiff had not proved that the 1st defendant's actions were fraudulent nor that that they concealed any information that deprived it of its legal right and neither did it prove the intent to defraud between the defendants.

## *Analysis*

From the foregoing, it is easy to assess that the circumstances surrounding the registration of the 2nd defendant's business name were a bit peculiar. It wasn't until the plaintiff attempted to register the Nyege Nyege mark and the same was rejected that the 2nd Defendant applied to register his business name and the same was allowed.

As submitted by the 2nd Defendant's Counsel, the Registrar follows the following procedure to register a business name;

- 1. Conducts a search on the Business Names Register to ensure that the name does not already exist on the register. - 2. Confirms in their opinion whether or not the name is misleading under sections 15 and 16 - 3. If the name is not yet on the register and is not thought to be misleading, it is registered as a business name.

The Defendants like any other Ugandan were all aware of the *Nyege Nyege Festivals* that were organized by the plaintiff. The 2nd defendant also stated that he had never organized any festivals under the said business name before or after the plaintiff's attempted registration of the Trademark.

The 1st defendant had a duty to ensure that the business name the 2nd defendant was seeking to register was not misleading. By registering the business name Nyege Nyege Music Festival, the 2nd Defendant was misleading the public as the organizer of the popular Nyege Nyege International Music Festival organized by the Plaintiff which was illegal.

I therefore find that the 2nd defendant illegally and fraudulently procured registration of the business name *"Nyege Nyege Music Festival"* to mislead and cause confusion with the plaintiff's business styled as *"Nyege Nyege International Music Festival".*

## *Whether the plaintiff is entitled to the remedies sought***?**

The plaintiff never applied to register the business name *"Nyege Nyege International Music Festival"* so this Court cannot usurp the 1st defendant's powers by granting him an order stating that he is the legal owner of the same.

I find that the refusal by the 1st defendant to register the plaintiff's trademark *"Nyege Nyege"* and subsequent registration of the 2nd defendant's business name *"Nyege Nyege Music Festival"* was irrational and illegal.

The 1st defendant is ordered to deregister the 2nd defendant's business name and the plaintiff's trademark should be registered.

A permanent injunction is used against the 2nd defendant and/or any of his agents from any claim or right to use the name *"Nyege Nyege Music Festival"*

Due to the peculiar nature of this case, each party should meet their costs.

I so order.

*SSEKAANA MUSA JUDGE 14th February 2025*