[2022] UGCommC 90

#### THE REPUBTIC OF UGANDA

### IN THE HIGH COURT OF UGANDA AT KAMPATA

### (coMMERCrAL DlVlsloN)

### CIVIL SUIT No. 821 Ot 2019

INTEL CORPORATION PLAINTIFF

## 10 VERSUS

INTET COMPUTERS LIMITED DEFENDANT

## BETORE: HON. IADY JUSTICE SUSAN ABINYO

### JUDGMENT

# 15 lntroduciion

The Plointiff instituied this suit ogoinsl the Defendont for lrodemork infringement seeking the following reliefs: o declorotion thot ihe Defendonl is infringing on the Ploiniifi's registered INTEL trodemork; on Order for o permonenl iniunction resiroining the Defendont from using the mork INTEL in ony monner wholsoever,

- 20 including in ils nome "INTEL COMPUTERS L|M|TED", ond restroining the Defendont from using ony resembling or similor nome or trodemork to thoi of ihe Plointiff's regislered INTEL trodemork in the future, in relotion to ony goods or services identicol or similor lo lhose covered by the Ploinliff's trodemork registrotion No. 22192 INTEL in closs 9, ond No. 42587 INTEL in closs 42; on Order direcling ihe - Defendont to chonge its compony nome "INTEL COMPUTERS LIMITED" to one lhot does not incorporoie the Plointiff's INTEL trodemork or ony other resembling or similor mork; on Order 1o deliver- up for deslruclion oll the Defendonl's moteriol beoring the "INTEL COMPUTERS LIMITED" nome, trodemork, ond, or get up, ond, or ony other moteriol belonging to the Defendonl which infringes on the Ploinliff 's 25 - INTEL trodemork, ond thol costs of the suii be provided for. 30

### Focts

During lhe scheduling proceedings, there were no ogreed focts.

The Plointiff 's focts ore thoi the Plointiff wos f ounded on I 8ih July, I 968 by semiconduclor pioneers Roberl Noyce, ond Gordon Moore, ond the INTEL 'dropped e logo'wos odopted in 1968.

I

- ⁵ Thot the Plointiff firsl registered its trodemork INTEL in closs 9 in the Uniied Stotes of Americo under registrolion No. 938,772 on 25rh July, 1972. IodoY, the Ploiniiff is the proprietor in Ugondo of trodemork registrotion No.22192lNTEL in closs 9 os of I7rh Februroy, 1999, ond trodemork regisirotion No.42587 INTEL in closs 42 os of 9rh Februory, 201 I . Thot the Ploiniiff supplies the computing ond communicotion - industries with microprocessors, boords, syslems, ond softwore building blocks which ore the "ingredients "of computer servers, networking ond communicotion producls, ond thol lhe Ploinliff's cuslomers include individuol consumers, businesses, schools, ond vorious governmenl deporlments. 10

Thol for over 50 yeors. lhe Plointiff hos used lhe mork INTEL os o lrode nome, ond trodemork to ideniify virtuolly ils entire line of products, ond services. INTEL is one of lhe world's most voluoble, ond lomous nome, ond lrodemork worldwide. Thol os oresuli of lhe Plointiff's extensive use, ond promotion of its INTEL trodemork, it hos become o household nome in Ugondo. Thol the Plointiff's registrolion, ond use of iis trodemork INTEL in Ugondo commenced before the Defendont wos

incorporoted in Ugondo under the nome "INTEL COMPUTERS LlMITED", ond thot the Plointiff hos ocquired substonliol goodwill, reputotion, ond well known mork siotus in its INTEL trodemork ln Ugondo. 20

The Plointiff coniends ihot lhe use of lhe Defendont's nome INTEL COMPUTERS LIMITED, infringes the Plointiff's registered INTEL trodemork in lerms of sections 36, ond 37 of the Trodemorks Act, 2010(hereinofter referred 1o os "ihe Act").

The Defendonl on lhe olher hond, is o limiled liobility compony incorporoled under lhe lows of Ugondo on l3rh Moy, 2002 under Compony No. 53373 in ihe nome INTEL COMPUTERS LIMITED, ond thot the Defendoni "INTEL COMPUTERS LIMITED" deols in compuler equipmenls, repoir, refurbishing services, upgrode

services, ond networking services, ond thot the Plointiff 's regislered trodemork closs 42 in Ugondo wos ofter the incorporotion of the Defendont compony. 30

Thot prior io the Defendont's incorporotion, the Defendonl's representotives conducled oll the necessory verificotions in lhe regislry. ond estoblished thot the nome wos ovoiloble for use, ond incorporoled the Defendont compony in the

nome "INTEL COMPUTERS L|M|TED", which hos engoged in lhe business of repoiring, ond instolling sofiwore in compuiers for over l8 yeors, ond thoi the Defendont owns the some. ond is in no woy infringing the Ploiniiff's or ony other trodemork. 35

# s Representotion

The Plointiff wos represented by Counsel Sekotowo Mothios jointly with Counsel Ntole Alex of M/S MMAKS Advocotes while the Defendonl wos represented by Counsel Homuzo Sebutio of M/S Nsibombi & Nsibombi Advocoles. Legol ond Corporoie Consultonls.

# 10 lssues for determinotion

The issues set out in ihe Joint Scheduling Memorondum tiled by the porties on 1Oth November, 2O2O were modified during the heorings of l9tt' Morch. 2021 , ond 25t^ November, 2021 os follows:

- l. Whether the Defendont's use of the nome "lNTEL" constiluies infringemenl of the Plointiff 's "lNTEL" lrodemork. - 2. Whether the Defendonl's use of ihe nome "INTEL COMPUTERS LlM|TED", ond the Defendont's logo. #L'- (which imitotes lhe Plointiff's INTEL "dropped e" togo) ^Intel constilules infringement of lhe Ploiniiff's "lNTEL"

trodemork in terms of seclions 36, ond 37 of the Acl.

20 3. Whot remedies ore ovoiloble lo the porlies.

Counsel for the porlies herein, were directed to file witness slotemenls which they complied with. During the heorings, the soid wilness slolemenls were odmitted on record os their evidence in chief. The Plointiff odduced the evidence of Mr. Nishon Singh (hereinofler refened to os "PWl") the legol Representotive, ond holder of Power of Attorney doted 6rn November,20l9, morked PEI7. The

Defendont summoned Mr. Yosser Foisol lhe Monoging Director (hereinofier referred 1o os "DWl"). 25

## Evide nce

30 PWI gove o bockground on the foundolion of the Plointiff compony in the United Stotes of Americo, ond its incorporotion in 1972 in Annexture" NS6" morked PE5; the registrotion of the Plointiff's INTEL trodemork in Ugondo in closs 9 on l71h Februroy, I 999 in Annexiure "NS7" morked PE6. ond closs 42 on 9rh Februory ' 2011 , in Annexiure "NS8" morked PE8, ond thot he hos been responsible for the enforcement of the Plointiff 's trodemork for over the posl decode.

35 It wos the evidence of PWI lhot the INTEL trodemork is lhe Plointiff's primory lrodemork, ond is used on or in ossociolion wilh virtuolly oll ospecis of the Plointiff 's business. including products, services, pockoging. communicotions, sociol medio

- and advertising, and that the Plaintiff is not just a microprocessor company but its $5$ business spans the fields of health, computers, communications, the internet etc. all of which are becoming increasingly interconnected, and in which the Plaintiff uses its INTEL trademark. That the Defendant's use of the name INTEL COMPUTERS LIMITED, reflects the INTEL portion of its name in a format identical to the Plaintiff's - "dropped e "logo on its storefront signage annexed hereto as "NS11" marked PE 10 11, and the receipts in Annexture "NS12" marked PE12.

PW1 testified that it is evident from Annexture "NS7" which was marked exhibit PE7 that the Plaintiff registered its INTEL trademark in Uganda in class 9 in respect of computer hardware; computer firmware; semiconductors; Computers: integrated circuits; microcomputers; computer chipsets; etc. and Annexture "NS8" marked exhibit PE8 in class 42 in respect of "Computer- related, and communications -related services, namely installation, repair, maintenance, support and consulting services for computer- related, and communicationsrelated goods; online catalog and mail order services for computer-related, and

communications-related goods, and services; etc. 20

PW1 further testified that the Defendant's name INTEL COMPUTERS LIMITED, which is being used in a manner as to be taken as a trademark, wholly incorporates the Plaintiff's registered INTEL trademark, and that the word COMPUTERS in the Defendant's name increases the likelihood of confusion because it is descriptive

- of the Plaintiff's field of interest, and that the Defendant is using a mark that so 25 nearly resembles the Plaintiff's trademark, as to be likely to deceive or cause confusion in the course of trade. That in light of the above, use of the Defendant's name INTEL COMPUTERS LIMITED infringes the Plaintiff's registered INTEL trademark in terms of section 36, and 37 of the Act. - PW1denied the Defendant's allegation that its company name was available for 30 use on the date of its incorporation in 2002, and stated that the Plaintiff's INTEL trademark was registered in Uganda as of 17^th February, 1999 prior to the incorporation of the Defendant's company, and that on the date of incorporation, use of the Defendant's company name infringed the Plaintiff's - registered trademark. 35

DW1 testified on the background of the Defendant's incorporation under the name INTEL COMPUTERS LIMITED with company No. 53373, a copy of the certificate of incorporation was attached as Annexture "A", and marked DE1, and that the Defendant company deals in computer repair, refurbishing, computer upgrade, and computer networking services, and that prior to its

- incorporation, he conducted all the necessary verifications in the company $\mathsf{S}$ registry, and established that the name was available to be used by any new company at the time, and belonged to no other, and was not similar to any Ugandan company. - It was the testimony of DW1 that the company started business of repairing and installing software in computers, and has been doing it for more than 17 years, 10 and that the INTEL CORPORATION trademark that was registered in Uganda in 1999, related to manufacturing to which the Defendant is not involved. That by the time the Plaintiff registered class 42 on the 9^th February, 2011, the Defendant had been in operation for over nine (9) years, and could not have infringed on - their trademark. 15

DW1 further testified that the company has gained substantial good will and recognition in the repair and installation of software to its small scale consumers, and that the company has never suffered any interventions from any third party, and it came as a shock when they received summons from the Plaintiff. That the

20 Defendant company has never owned or registered any trademark, and cannot be infringing on the Plaintiff's trademark.

Counsel for the Plaintiff preferred to deal with issue 2 above, then 1, and lastly 3, which order this Court will adopt hereunder:

Issue No. 2: Whether the Defendant's use of the name "INTEL COMPUTERS

LIMITED", and the Defendant's logo, computer which imitates the Plaintiff's INTEL 25 intel, constitutes infringement of the Plaintiff's "INTEL" "dropped e" logo) trademark in terms of sections 36, and 37 of the Act.

Counsel for the Plaintiff submitted that the Plaintiff has registered its INTEL trademark in black and white colours, and block capital font which affords the Plaintiff wide protection in respect of all colours and all fonts, and that there is no limitation on the Plaintiff's trademark rights.

In reply, Counsel for the Defendant submitted that the operative word is a trademark, and that it was conceded that the Defendant owned no trademark but operates as a duly registered company, and as such it is not true, and 35 inconceivable that by using the duly registered company name INTEL COMPUTERS LIMITED, the Defendant infringes the Plaintiff's registered trademark.

- In rejoinder, Counsel for the Plaintiff submitted that the Defendant's claim that it $\mathsf{S}$ is not using a trademark is an illogical argument because the Defendant's company name, and logo are both used as trademarks for its business, and that under section 1 of the Act, a trademark is defined to include a mark or sign, and a "mark or sign" includes any name or logo or any combination of them. That the - Defendant is using the name INTEL COMPUTERS LIMITED, and a sign <br> mmput rs. LTD, both 10 of which are trademarks that are infringing the Plaintiff's INTEL trademark.

#### Decision

Section 36 of the Act, provides for the rights given by registration of goods in part

A, and what amounts to infringement thereof, while section 37 of the Act, 15 provides for the rights given by registration of services in part A, and infringement of the same.

A trademark means a sign or mark or combination of signs or marks capable of being represented graphically, and capable of distinguishing goods or services

- of one undertaking from those of another undertaking. A sign or mark includes 20 any word, symbol, design, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of these capable of being represented graphically. (See section 1 of the Trademarks Act, No. 17 of 2010) - In the given circumstances of this case before me, protection is extended to the 25 use of logos, once the requirement of registration is done in accordance with the law as hereunder.

It is noteworthy that for a trademark to be eligible for registration, it must relate to particular goods or services, and this is the rationale for classification of registration 30 either under part A or B of the Act. To enable registration under part A, the Applicant must satisfy the requirements of distinctiveness (See section 4 of the Act), and non-descriptive nature of the goods or services. It is descriptive if it describes the nature or identity of the goods or services for which it is used. (See

section $9(1)$ (e) of the Act) 35

Upon registration, the owner of the trademark acquires exclusive rights to use the trademark in relation to goods or services for which the trademark is registered for a period of 7 years, and is renewable every 10 years upon payment of a prescribed fee, subject to any limitations entered on the register.

$6$

- Infringement of a trademark occurs when a person, not being the owner of the $\mathsf{S}$ trademark or authorized by the owner of the trademark, uses in the course of trade a mark identical to or resembling it, in relation to goods or services identical or similar or of the same description with those for which the trademark was registered, and where, the use would result in a likelihood of confusion. (See - sections 36, and 37 of the Act, and Halsbury's Laws of England 4^th edition 1984, 10 Butterworths London at 61; paragraph 81 on the expressions "identical mark for identical goods or services", and paragraph 82 on "identical mark for similar goods or services; similar mark for identical goods or services) - Section 36(3) of the Act provides that: $\frac{1}{2}$ 15

"The right to the use of a trademark given by registration in Part A of the register," shall be subject to conditions or limitations entered on the register and shall not be taken to be infringed by the use of that mark in any mode, in relation to goods

to be sold or otherwise traded in a place, in relation to goods to be exported to 20 a market or in any circumstances, to which, having regard to the limitations, the registration does not extend." (Emphasis is mine)

In the instant case, it was the Plaintiff's evidence as above, that from Annexture "NS7" which was marked exhibit PE7, the Plaintiff registered its INTEL trademark in 25 Uganda in class 9 in respect of Computers; computer hardware; computer firmware; semiconductors; integrated circuits; microcomputers; computer chipsets; etc.

The Defendant's evidence was that prior to its incorporation, they conducted all the necessary verifications in the company registry, and established that the 30 name was available to be used by any new company at the time, and belonged to no other, and was not similar to any Ugandan company, and that the company started business of repairing and installing software in computers, and has been doing it for more than 17 years. That the INTEL CORPORATION trademark

that was registered in Uganda in 1999 by the Plaintiff related to manufacturing to 35 which the Defendant is not involved.

According to Halsbury's Laws of England(supra), para.70 at 51, the concept of likelihood of confusion is used both for assessing the registrability of a sign, and as a test for infringement. In the context of infringement, the Court must assume that

the registered trademark is used in a normal and fair manner in relation to goods 40 or services for which it is registered and then assess a likelihood of confusion in

relation to the way the Defendant uses its sign, discounting added matter or $\mathsf{S}$ circumstances.

In the case of British Sugar Plc Vs James Robertson & Sons Ltd [1996] RPC 281at 296 per Jacob. J stated that:

- "In relation to the expression "goods of the same description" the Courts found a useful test coined by Romer J in Re Jellinek's Application (1946)63 10 RPC 59 at 70, namely that regard should be had to the nature and composition of the goods, the respective uses of the articles, and the trade channels through which the commodities are respectively bought and sold." - The Judge in that case further observed that the inquiry as to the extent to which 15 the respective goods are competitive may take into account how those in the trade classify goods (eg whether market research companies, who act for the industry, put the goods or services in the same or different sectors).

I have considered the guidance in the authority of British Sugar Plc Vs James

- Robertson & Sons Ltd above, cited by Counsel for the Plaintiff, in relation to the 20 expression "goods of the same description" and taken into account the nature, and composition of goods in class 9, which relates to the manufacture of computers, and computer products, and find that the Defendant's business relates to repair and installation of software in computers. The nature of the - Defendant's business is therefore different from that of the Plaintiff, and does not 25 relate to goods in class 9 as alleged by the Plaintiff.

In regard to the trade channels through which the said goods are bought and sold by the Defendant, no evidence was adduced by the Plaintiff to prove that the goods bought and sold originated from the Plaintiffs products that are

- manufactured under class 9, for which the Plaintiff's INTEL mark was registered 30 or that the Defendant used the name "INTEL COMPUTERS LIMITED", and Logo **Intel ...** to deal in identical or similar goods for which the Plaintiff registered the **INTEL** trademark. - The burden of proof lies with the Plaintiff to prove the fact of infringement. The 35 Plaintiff has not adduced cogent evidence to prove that the Defendant's use of the name "INTEL COMPUTERS LIMITED" as a company and, or the logo as a mark in the course of trade, was in respect of goods that are identical or similar or of the same description in class 9 for which the Plaintiff's INTEL trademark was - registered. 40 $\mathsf{S}$

Decided cases have established that the "test of infringement is likelihood of confusion which is the probability that a reasonable customer in the relevant market will be confused or deceived, and will believe the infringers' goods or services to come from or sponsored or endorsed by the complainant or that the

two are affiliated. (See Vision Impex Limited Vs Sansa Ambrose & Goldman 10 Logistice Import and Export, HCCS No. 303 of 2013, which cited with approval the cases of Angelo Fabrics (Bolton) Ltd and Anor Vs Africa Queen Ltd and Anor, HCCS No. 632 of 2006, and Standards signs (U) Ltd Vs Standard Signs Ltd and Anor, HCCS No. 540 of 2006), relied upon by Counsel for Defendant in their submissions.

I am inclined to find that the Defendant's use of the name "INTEL COMPUTERS LIMITED" and the logo was not in respect of goods in class 9 of the International Classification of Goods and Services, and that the likelihood of confusion, which would otherwise be created to the public by the way the

Defendant uses its sign is far-fetched. 20

> In the result, this Court finds that the Defendant's name "INTEL COMPUTERS LIMITED", and its business of repairing and installing software in computers, did not in any way interfere with the exclusive rights of the Plaintiff as the registered owner

- of INTEL trademark in part A of the Act, in respect of goods in class 9 as provided 25 in the International Classification of Goods and Services that relates to Computers; computer hardware; computer firmware; semiconductors; integrated circuits; microcomputers; computer chipsets; etc. for which the Plaintiff registered its INTEL trademark. - The submission by Counsel for the Plaintiff that the Defendant is using two marks, 30 namely the company name INTEL COMPUTERS LIMITED, and the logo, and that both these marks wholly incorporate the Plaintiff's registered INTEL trademark in a dominant and prominent manner, and therefore the said name and logo so nearly resembles the Plaintiff's INTEL trademark as required by sections 36 and 37 - of the Act is untenable. 35

For reasons above, I find that the Defendant's use of the name "INTEL COMPUTERS LIMITED", and the Defendant's logo, computer, does not constitute infringement of the Plaintiff's "INTEL" trademark in respect of goods in class 9 in terms of section 36 of the Act.

#### Section 37(3) of the Act provides that:

"The right to the use of a trademark given by registration in Part A of the register shall be subject to conditions or limitations entered on the register and shall not be taken to be infringed by the use of that mark in any mode, in relation to services for use or available for acceptance in a place, country or territory or in any other circumstances, to which, having regard to the limitations, the registration does not extend." (Emphasis is mine)

- The Plaintiff's evidence was that its registered INTEL trademark in class 42 in 15 Annexture "NS8" marked exhibit PE8 was in respect of "Computer- related, and communications-related services, namely installation, repair, maintenance, support and consulting services for computer- related, and communicationsrelated goods; online catalog and mail order services for computer- related, and - communications-related goods, and services; etc. 20

The Defendant's evidence was that by the time the Plaintiff registered class 42 on the 9^th February, 2011, it had been in operation for over nine (9) years, and could not have infringed on their trademark.

Infringement of a trademark in part A of the Act, occurs when a person, not being the owner of the trademark or authorized by the owner of the trademark, uses in 25 the course of trade a mark identical to or resembling it, in relation to goods or services identical or similar or of the same description with those for which the trademark was registered, and where, the use would result in a likelihood of confusion. (Emphasis is mine)

It was submitted for the Plaintiff that it is necessary to compare the trademark as registered, with the mark used by the Defendant to determine whether a person's trademark has been infringed.

This Court was unable to make a comparison of the Plaintiffs "dropped e" logo) 35 , in which the Plaintiff alleges that the Defendant's use of the logo $\mathbf{e}_{\mathbf{r}}$ imitates, and nearly resembles its "INTEL" trademark, and that it constitutes infringement under sections 36 and 37 of the Act because there was no evidence adduced by the Plaintiff to prove that fact. The logo displayed on the Plaintiff's anniversary brochure attached as Annexture "NS4" marked PE3, 40

$\overline{5}$

- and the printouts from the social media pages demonstrating use of the Plaintiff's $\mathsf{S}$ mark attached as "NS5" marked PE4, bears the name "intel" in lower case as opposed to "INTEL" in upper case, the registered mark of the Plaintiff, without the dropped e logo as alleged by the Plaintiff. - I am cognisant of the provision of the law under sections 36, and 37 of the Act. 10 and find that in cases of this nature, the test of infringement is likelihood of confusion, which has been considered above.

This Court made a comparison of the Defendants name "INTEL COMPUTERS

LIMITED", and its logo with the Plaintiffs mark "INTEL" first registered in 15 the United States of America in 1972, a copy of the certificate of registration of the said mark No. 938,772 was marked exhibit PE5, the mark "INTEL" registered in Uganda under the name "INTEL CORPORATION" in respect of class 9 on 17^th February, 1999, a copy of the certificate of registration of the said mark in No.

- 22192 was marked exhibit PE6, and the mark INTEL registered in Uganda under the 20 name "INTEL CORPORATION" in respect of class 42 on 9^th February, 2011,a copy of the certificate of registration of the said mark in No. 42587 was marked exhibit PE7. - It is notable that the mark "INTEL" or "INTEL" as seen above, was in black and 25 white colour with capital font however, the spacing in the latter mark, in respect of goods in class 9 by the Plaintiff, does not resemble the former mark except for the use of the word INTEL. The mark "INTEL" registered in 1999, was prior to the Defendant's registration of the name "INTEL COMPUTERS LIMITED" in respect of - class 9 of the International Classification of Goods and Services, for which this 30 Court has made a finding above.

The meaning of the word "use" for purposes of infringement occurs when a person uses a sign, in particular, if he:

- affixes it on the goods or the packaging thereof; 35 i. - offers or exposes goods for sale, puts them on the market or stocks them for ii. those purposes under the sign or offers or supplies services under the sign; - imports or exports goods under the sign; or iii. - uses the sign on business papers or in advertising. (See Halsbury's Laws of iv.

40 England $4$ ^th edition(supra) para.84 at 62)

- The comparison further reveals that the Defendant's name "INTEL COMPUTERS $\mathsf{S}$ LIMITED" as a company name, was registered prior to Plaintiff's name "INTEL CORPORATION", and mark "INTEL" in respect of class 42 of the International Classification of Goods and Services. This notwithstanding the fact that the Defendant's logo $\frac{1}{\text{comp}}$ is descriptive of goods or services in class 42. - 10

Accordingly, the Defendant cannot be said to have infringed on the Plaintiff's "INTEL" registered trademark in respect of goods or services in class 42, which was used by the Defendant prior to the Plaintiff's registered "INTEL" mark.

- It is notable that registration of a company is governed by the Companies Act. 15 2012, and registration of trademarks is by the Trademarks Act, 2010. The prerequisites to enable registration in the respective laws are totally different. However, it's possible for a company to reserve a name under the Registry of Companies, and also use that name as a mark, if it meets the requirement of - registrability under the Act. 20

The Plaintiff did not adduce evidence to prove to the satisfaction of this Court that the Defendant was using its name "INTEL COMPUTERS LIMITED" in the course of trade in respect of goods or services identical or similar or of the same description to the Plaintiff's "INTEL" mark in class 42 of the International Classification of Goods and Services.

In the whole, I find that the Defendant's use of the name "INTEL COMPUTERS" LIMITED" compared with the Plaintiff's INTEL trademark, does not constitute infringement of the Plaintiff's "INTEL" trademark in respect of class 42, in terms of 30 section 37 of the Act for which the Plaintiffs INTEL trademark was registered.

Issue No.1: Whether the Defendant's use of the name "INTEL" constitutes infringement of the Plaintiff's "INTEL" trademark.

The ingredients for infringement of a trademark are as follows:

- That the mark is identical or similar to the registered mark. $i.$ - The mark was used in the course of trade in relation to goods or ii. services identical or similar or of the same description. - As a result, there is a likelihood of confusion with the registered mark iii. or between the registered marks. (See L. Bently & B. Sherman Intellectual Property Law 4^th edition at 1038)

$\mathsf{S}$

These ingredients have been taken into account in the determination of the 2^nd issue above however, the outline herein is for emphasis on this $1^{st}$ issue.

### Section 24 (b) and (c) of the Act provides that: $\frac{1}{2}$

"The registration of a trademark shall not affect—

(b) the bona fide use by a person of any description of the character or quality of his or her goods or services, not being a description that is likely to be taken as importing a reference mentioned in section $36(2)(b)$ or:

(c) the bona fide use by a person of a description of the character or quality of his or her services, not being a description that is likely to be taken as 15 importing a reference as mentioned in section $37(2)(b)$ ." (Emphasis is mine)

# Section $36(2)(b)$ of the Act provides that:

"Without prejudice to the general effect of subsection (1), the right conferred by that subsection shall be taken to be infringed by a person who, not being the 20 owner of the trademark or a registered user of the trademark uses by way of permitted use, a mark identical with or so nearly resembling it, as to be likely to deceive or cause confusion in the course of trade in relation to any goods of the same description where the use would result in a likelihood of confusion and in

- such a manner as to render the use of the mark likely to be taken— 25 (b) in a case in which the use of the goods or in physical relation to the goods or in any publishing circular or other publication issued to the public, as importing a reference to some person having the right as owner or as registered user of the trademark or to goods with which that person is connected in the course of - trade." (Emphasis is mine) 30

# Section $37(2)(b)$ of the Act provides that:

"Without prejudice to the general effect of subsection (1), the right conferred by subsection (1) shall be taken to be infringed by a person who, not being the owner

- of the trademark or a person authorised by the owner for that purpose, uses it in 35 connection with the provision of any services a mark identical with or nearly resembling it, in relation to services in respect of which it is registered or in relation to services of the same description where the use would result in a likelihood of confusion and in such a manner as to render the use of the mark likely to be taken- - 40

- ⁵ (b) in o cose in which the use is neor the ploce where ihe services ore ovoiloble for occeptonce or performed or in on odvertising circulor or other odvertisement issued to the public os importi o o reference to some oerson hovino o rioht either os owner or bv his outhorisolio n under the relevont reoulotions to use lhe mork or services wilh the provision of which lhot oerson is connecied in the course ol - 10 business (Emphosis is mine)

ln the instonl cose, the Defendont odduced evidence to prove lhe choice of the nome INTEL for its registered compony nome "INTEL COMPUTERS LIMITED"' This evidence wos uncontroverted by the Plointiff. In lhe given circumstonces, lhis

- 15 Courl is inclined io find lhot the Defendont's bonofide use of the descriplion of the chorocler or quolity of his goods thereof, does not omount to o description lhoi is likely lo be token os imporling o reference mentioned in section 36(2)(b) of the Aci. This finding is notwithstonding the Court's finding os obove, ihol the Defendont's nome or logo did noi interfere wilh the Plointiff's INTEL registered - ²⁰ lrodemork in pori A of lhe Acl in respect of goods in closs 9.

ln regord to closs 42 in respect of lhe Plointiff 's INTEL regislered lrodemork, this Court found os obove, thot the Defendont's use of ihe nome "INTEL COMPUTERS L|M|TED", does nol constitute infringement of the Ploiniiff's "lNTEL" trodemork in respecl of closs 42, in terms of seclion 37 ol the Act. The onswer in regord to this

25 lsrissue lherefore, is in the negotive.

It is my considered view thoi the reoding of sections 30, ond 35 of the Acl together, is to the effect thot non registrotion of o trodemork does not offect ony legol oclion ogoinst o person for possing ofl the goods ond services of onoiher.

#### lssue No. 3: Whoi remedies ore ovoiloble lo the oorties.

This Couri hoving found the issues (2) ond (l) obove in the negotive, none of lhe remedies is ovoiloble to the Plointiff os sought.

5)

I om cognisont of the moin purpose for which lrodemorks ore registered, ond fortified in my decision thol lhe Defendonl's use ol the nome "INTEL COMPUTERS LIMITED" connot prevent the public irom distinguishing the goods or services of Defendonl's undertoking from those of the Plointiff in the course of trode.

For reasons stated above, this suit is dismissed against the Plaintiff with costs to the $\mathsf{S}$ Defendant.

Dated and delivered by email to Counsel for the parties herein, this 9^th day of August, 2022.

SUSAN ABINYO **JUDGE** 9/08/2022

$\mathbf{a} = \mathbf{a} \times \mathbf{a}$