Authored By: Edwongu Lekos Odidi
Uganda Christian University
ABSTRACT
Trademark infringement has brought calamitous effects to registered trademark owners and infringers alike in the luxury fashion industry. However, safeguards have been developed and enforced against trademark infringement. Drawing on global perspectives from United States of America, Africa, international agreements and conventions, this study offers an integrative review of trademark infringement and its implications.
The study investigates the gaps and shortcomings dealt with by enablers, enforcers and users of Fashion and Intellectual Property Law to protect trademarks against infringers. The circumstances relied upon are meant to ensure adequacy in protection so as to relate to the most conducive measure when applying intellectual property rights.
The study contains a doctrinal legal research methodology to examine the legal principles governing the exclusive right to the use of a trademark without infringement, actions that amount to infringement and remedies available. This was reached through existing laws, statutes and case judgments. An analytical legal research methodology is also encompassed as far as the analysis of the measures protecting luxury fashion designers in Uganda against trademark infringement are concerned. The current law seems adequate enough to discourage trademark infringement although it does not solve the proneness of the Ugandan economy to the violation.
The key findings of this study include low levels of intellectual property awareness, slow growth of local industries due to inadequate workforce and consumers, decrepit enforcement mechanisms with need of enhancement and the sensitivity of the pricing ranges for the products.
INTRODUCTION
The luxury fashion designers in Uganda face the challenge of infringement of trademarks. They take forms of creative designs, brand names, logos, textiles and fashion labels. In order to probe for infringement, an exclusive right to the use of a trademark must exist. This is mandated by Fashion and Intellectual Property Law under the Trademarks Act[1] and the Regulations[2].
The Registrar appointed under the Act[3] has recently endeavored to create awareness and enforcement of Fashion and Intellectual Property rights in Uganda[4]. Luxury fashion designers are being encouraged to register their trademarks urgently, assured by the presence of the Intellectual Property enforcement unit of the Uganda Police Force and sensitized about free mediation before going to court[5]. This may give luxury fashion designers approval to set up and carry out business using Fashion and Intellectual Property Law without any worry of infringement of trademarks.
According to the Ministry of Information and Communication Technology and National Guidance, “Intellectual Property (IP) refers to the set of legal and ethical rights that protect the results of creative efforts, including literary, artistic, and scientific works, performances, broadcasts, inventions, scientific discoveries, trademarks, and designs.”[6] The enforcement of Intellectual Property Law by Trademarks Act[7] in Uganda is stipulated under the 1995 Constitution of the Republic of Uganda[8] and the Judicature Act[9]. These laws confer jurisdiction to be exercised by the High Court in conformity with the written law that is to say, the Trademarks Act[10] and the Regulations[11].
The Uganda Registration Services Bureau also protects luxury fashion designers against infringement of trademarks being a signatory to international agreements and conventions[12]. These agreements are meant to promote commercialization of the trademarks of designers domestically and internationally for the growth of the economy while maintaining the enforcement of safeguards against any infringement.
The core issue lies in the ambiguity of a luxury fashion designer’s exclusive right to the use of a trademark without infringement from another. Does infringement occur at the fault of a luxury fashion designer, intentionally by culprits or is it just a mere coincidence? The determination of what amounts to infringement creates a conundrum for luxury fashion designers’ ownership of trademarks. Thus, the need for luxury fashion designers to be protected by the Uganda Registration Services Bureau with Intellectual Property rights.
The likelihood of confusion that causes infringement of a trademark was set down in precedent in Nairobi Java House Limited vs. Mandela Auto Spares Limited[13] through a practical approach with reliance on the law[14] that drew the case to a satisfying conclusion. The protection of luxury fashion designers in Uganda against infringement of their trademarks is established in the Trademarks Act[15] and Regulations[16]. These laws largely focus on whether the trademark can be registered, protected from infringement and measures can put in place to safeguard the right of ownership. Therefore, this research will aim at critically analyzing the protection of luxury fashion designers in Uganda against trademark infringement.
The article is structured as follows; Introduction, Background / Conceptual Framework, Legal Analysis, Case Law Discussion, Critical Analysis and findings, Conclusion.
BACKGROUND / CONCEPTUAL FRAMEWORK
According to the World Intellectual Property Organization (WIPO), fashion enterprises must develop an intellectual property strategy and governments should create an enabling policy environment.[17] Accordingly, an effective system of intellectual property protection and enforcement by an institution mandated to enhance commercial potential and allow the transfer of knowledge to take place for innovation and creativity to flourish[18]. This should be implemented by the Uganda Registration Services Bureau to promote protection mechanisms and rapid growth of fashion enterprises in the economy. For instance, a luxury fashion designer may rely on a trademark without worrying about an infringer acting inconsequentially.
The National Intellectual Property Policy of Uganda has recognized the possibility of intellectual property contributing to development and sustainable exploitation of human ingenuity and creativity to enhance economic competitiveness[19]. The increase in opportunities for luxury fashion designers must be accompanied by fashion and intellectual property law awareness.
The public is known to prefer goods and services of a certain quality and image of a trademark; therefore, it is advisable for luxury fashion designers to have them registered to avoid deception from infringers[20]. Such ownership not only protects quality and image of a trademark but also allows an owner to benefit from infringement.
The protection and management of intellectual property rights stimulates innovation, fosters growth of local industries and contributes to Uganda’s economic development[21]. This means that the Uganda Registration Services Bureau should stimulate innovators to take part. This allows luxury fashion designers who opt take advantage of fashion and intellectual property law to alert others about the possibility of engagement. This will not only bring great returns to luxury fashion designers but also drastically develop the economy in various circumstances.
“The key issues the Policy needs to address, in respect to generation, protection, commercialization and enforcement of intellectual property rights are lack of appropriate intellectual property infrastructure to support innovation and creativity and inadequate human capital development for the intellectual property value chain”[22]. These issues go beyond the expectations of luxury fashion designers in Uganda. But they must be strived for tremendously over the years by the Uganda Registration Services Bureau in its mandate to protect and enforce Fashion and Intellectual Property rights in Uganda.
This article will aim to analyze the need for effectiveness and efficiency in the enforcement of intellectual property rights in Uganda to protect luxury fashion designers against infringement of trademarks; with a focus on identifying gaps and proposing recommendations for reform.
LEGAL ANALYSIS
The issues at hand involve a luxury fashion designer’s exclusive right to the use of a trademark, actions that amount to infringement of a trademark and the remedies.
- Whether a luxury fashion designer’s exclusive right to the use of a trademark is protected?
The 1995 Constitution of the Republic of Uganda[23] establishes the jurisdiction of courts to exercise judicial power.
The Judicature Act[24] confers jurisdiction on the High Court to be exercised in conformity with written law.
The protection of luxury fashion designers against infringement of trademarks in Uganda is put into effect by the Uganda Registration Services Bureau under the Trademarks Act[25].
The Trademarks Act[26], establishes the Board of Directors and designates the Registrar who are appointed under the Uganda Registration Services Bureau Act[27].
Trademark is defined as “A distinctive mark or device or device affixed to or accompanying an article intended for sale for the purpose of indicating that it is manufactured, selected, or sold by a particular person or firm.”[28]
According to the Trademarks Act[29], “a trademark refers to 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.”
The Honourable Mr. Justice Yorokamu Bamwine[30] suggested that “In matters of intellectual property, a trademark is a word, phrase, symbol, product feature or any combination of these that distinguishes in commerce the goods or services of its owner from those of others. A trademark, therefore, is an indicator of source. It does not tell what the goods or services are but where they come from. Trademark protection is granted to trade dress-the packaging or overall look and feel of what constitutes a person’s product or services.”
The Trademarks Act[31], establishes that a trademark must constitute a sign or a combination of signs capable of distinguishing goods or services of one undertaking from others.
The Trademarks Act[32], stipulates registration depending on distinctiveness acquired through use when a sign is incapable of distinguishing the relevant goods or services.
The Trademarks Act[33], requires a sign to be capable of graphical representation so as to be registered.
The Trademarks Act[34], illustrates safeguards which ensure that a trademark is protectable subject matter.
The Trademarks Act[35], proves that a person intending to apply for registration of a trademark must carry out a search in the register to ascertain whether it exists or not. This is only done upon payment of a prescribed fee.
The Registrar may also give advice to a person intending to apply for the registration of a trademark[36]. The person seeking such advice must apply in the prescribed manner[37].
The Trademarks Act[38] states that the prescribed form for registering for a trademark is Part A and Part B upon applying to the Registrar in writing.
Upon successful registration of a trademark[39], a luxury fashion designer obtains exclusive right to use it freely.
In Dipak Emporium vs. Bond’s Clothing[40], the issue concerns the manufacture and sale of men’s trousers. The infringement of the trademark and passing off was found by the Judge because of the view of the close relation of the words used. These words were misleading because only one party owned the trademark while the other manufactured and sold trousers using the same trademark.
In the instant case, the close relation of words used in a trademark of an infringer to those of the owner may mislead the public thereby causing a likelihood of confusion.
Therefore, a luxury fashion designer’s exclusive right to the use of a trademark is protected in Uganda.
- Whether there are actions that amount to infringement of a trademark?
Actions that amount to infringement of a trademark depend on the circumstances involved.
Infringement is defined as “Interference with, or violation of, the right of another, particularly the right to a patent or copyright. The remedy is an injunction to restrain future infringements, and recovery of the damages caused or profits made by the past infringements.”[41]
The Trademarks Act[42], stipulates the effect of registration which bars institution of proceedings when the trademark is unregistered[43] and allows a right of action and remedies for passing off[44]; while an action for infringement depends on the subject matter of the undertakings being identical, resembling or causing a likelihood of confusion[45].
In Nairobi Java House Limited vs. Mandela Auto Spares Limited[46], the Appellant appealed against the decision of the Registrar of Trademarks to refuse an application for registration of a trademark that would cause a likelihood of confusion. Christopher Madrama Izama, Judge suggested that “Mere association in the sense that one trademark brings the other trademark to mind is not sufficient for purposes of determining a likelihood of confusion.” He further reiterated that a survey of the concept of an average consumer of a trademark should have been properly conducted. This should have reflected evidence of the kind of clientele the Respondent has and defined a reasonable customer. The concept must import representativeness of the opinion of the clientele of the Respondent and the likelihood of confusion upon a reasonable customer.
Henceforth, if the Respondent is targeting similar clientele with the Plaintiff, then a reasonable customer of the latter is likely to be confused by both trademarks.
In the case of Anglo Fabrics (Bolton) Ltd and Ahmed Zziwa vs. African Queen Ltd and Sophy Nantongo[47], one of the issues before court was whether the product imported by the defendants infringe the plaintiff’s trademark in Uganda. The court found that use of an identical or a closely related trademark on goods or services in an undertaking to those of another causes a likelihood of confusion. The trademark owner must successfully show a likelihood of confusion to prove infringement so as to have a right of action in damages and an injunction to restrain the defendant for the future.
In this case, the likelihood of confusion caused by infringers violates rights of trademark owners.
Therefore, infringement is caused by evidence of likelihood of confusion.
- Damages or an injunction at court’s discretion[48].
CASE LAW DISCUSSION
Nairobi Java House Limited vs. Mandela Auto Spares Limited[49].
Facts;
The Appellant appealed against the Registrar’s refusal to register a trademark that would cause likelihood of confusion.
Judgement delivered;
“The concept of an average consumer must import representativeness of the opinion or likelihood of confusion. There is no evidence of the kind of clientele the Respondent has and who is a reasonable customer.”[50]
Legal Principle;
The two trademarks were dissimilar and capable of concurrent usage. The likelihood of confusion is not supported by evidence.
Relevance;
Evidence should support likelihood of confusion.
Gucci America, Inc. vs. Guess?, Inc., et al.[51]
Facts;
The plaintiff claimed trademark infringement by the defendants. Four trademarks and one trade dress were involved.
Judgement delivered;
The test for trademark infringement requires the two-prong test that is to say, whether the plaintiff’s mark is entitled to protection and whether the defendant’s use of the mark is likely to cause consumer confusion as to the origin or sponsorship of the defendant’s goods[52].
“This type of confusion occurs when a potential purchaser, knowing that the public is likely to be confused or deceived by the allegedly infringing product, will choose to purchase that product instead of a genuine one in order to gain the same prestige at a lower price.”[53]
Legal Principle;
The probability of confusion, not a mere possibility, must be found to exist. This probability must support a finding of trademark infringement.
Relevance;
The likelihood of confusion must be supported by evidence.
CRITICAL ANALYSIS AND FINDINGS
The research is characterized by low levels of intellectual property awareness, slow growth of local industries due to inadequate workforce and consumers, decrepit enforcement mechanisms with need of enhancement and the sensitivity of the pricing ranges for the products. These have made luxury fashion designers in Uganda prone to trademark infringement.
The exclusive right to the use of a trademark by luxury fashion designers in Uganda without infringement. However, the likelihood of confusion caused by infringers has been eradicated considerably by efforts of the Uganda Registration Services Bureau, courts of law and established Laws of Uganda. For instance, the case of Nairobi Java House Limited vs. Mandela Auto Spares Limited[54] prevented injustice, unfairness and impartiality by relying on the Appellant’s authentic reality rather than the Respondent’s uncertain idealism.
The protection of Luxury fashion designers in Uganda against infringement of trademarks has been of concern for the growth of the economy. In an international perspective, a trademark owner bears the burden to establish the probability of a likelihood of confusion caused by an infringer who need not disprove the facts asserted[55]. This adds to the credibility and confidence in the protections offered to luxury fashion designers in Uganda against trademark infringement.
In case the key findings of that this research is characterized by are dealt with, luxury fashion designers could enjoy high profit, transparency and accountability. This means the gaps identified in this research and the proposed recommendations for reform suggested may be within an arm’s reach for the luxury fashion designers in Uganda to achieve protection against trademark infringement.
CONCLUSION
To a greater extent, luxury fashion designers in Uganda comply with the principles set down against infringement of trademarks. These principles continue to clear the path for the rise in awareness and enforcement of fashion and intellectual property law.
To a lesser extent, infringers are still taking advantage of their free will to confuse purchasers with their undertakings. The free will of infringers contrasts with the principles complied with by trademark owners which gives the latter a right of action for damages and an injunction against the former.
Therefore, this study emphasizes decency and inclusion of personnel of all calibers to develop and enforce Fashion and Intellectual Property law. This should enhance the exclusive right to the use of a trademark without infringement and allow the Uganda’s economy to grow.
BIBLIOGRAPHY
The 1995 Constitution of the Republic of Uganda as amended
Statutes
The Civil Procedure Act Cap. 282 (Revised, 2023)
The Judicature Act 1996 Cap. 16 (Revised, 2023)
The Trademarks Act 2010 Cap. 225 (Revised, 2023)
The Trademarks Regulations, 2023
The Uganda Registration Services Bureau Act Cap. 217 (Revised, 2023)
Case Judgements
Nairobi Java House Limited vs. Mandela Auto Spares Limited, High Court of Uganda, Civil Appeal No. 13 of 2015.
Anglo Fabrics (Bolton) Ltd and Ahmed Zziwa vs. African Queen Ltd and Sophy Nantongo, High Court of Uganda, Commercial Division, Civil Suit 0632 of 2006.
Dipak Emporium vs. Bond’s Clothing [1973] EA 553 (C.A.).
Gucci America, Inc. vs. Guess?, Inc., et al. 09 Civ. 4373 (SAS) (JLC).
Textbooks and Journals
P.G. Osborn, LLB. (1927). A Concise Law Dictionary for Students and Practitioners with Summaries of the Leading Cases and a Translation of Roman Law Terms and Latins Maxims.
The Ministry of Justice and Constitutional Affairs. (2019). National Intellectual Property Policy.
The Ministry of Information and Communications Technology and National Guidance. (2025). Guidelines for Managing Intellectual Property Rights of Locally Developed Information Technology Systems, Applications, and Innovations.
Nsubuga Ronnie. (2025). A Guide to Intellectual Property for Uganda’s Clothing and Fashion Design Industry.
Online Sources
Uganda Registration Services Bureau. (18/09/2025). Registrar General urges Fashion Designers to protect Creations through IP Laws. https://ursb.go.ug/2025/09/23/registrar-general-urges-fashion-designers-to-protect-creations-through-ip-laws/#:~:text=Peninah%20Nyangoma%20Rukundo-,Registrar%20General%20Urges%20Fashion%20Designers%20to%20Protect%20Creations%20Through%20IP,IP%20thieves%2C%E2%80%9D%20she%20warned. Accessed 5th March, 2026
World Intellectual Property Organization. (WIPO). (2011). The African Fashion Design Industry: Capturing Value Through Intellectual Property. https://www.wipo.int Accessed 6th March 9, 2026
[1] 2010 Cap. 225 (Revised in 2023)
[2] Trademarks Regulations, 2023.
[3] Trademarks Act 2010 Cap. 225 (Revised in 2023), section 1(1).
[4] Uganda Registration Services Bureau. (18/09/2025). Registrar General urges Fashion Designers to protect Creations through IP Laws. https://ursb.go.ug/2025/09/23/registrar-general-urges-fashion-designers-to-protect-creations-through-ip-laws/#:~:text=Peninah%20Nyangoma%20Rukundo-,Registrar%20General%20Urges%20Fashion%20Designers%20to%20Protect%20Creations%20Through%20IP,IP%20thieves%2C%E2%80%9D%20she%20warned.
[5] Ibid
[6] The Ministry of Information and Communications Technology and National Guidance. (January 2025). Guidelines for Managing Intellectual Property Rights of Locally Developed Information Technology Systems, Applications, and Innovations. Intellectual Property Rights, 1.2, 2.
[7] 2010 Cap. 225 (Revised in 2023)
[8] As amended, Article 126 (1).
[9] 1996 Cap. 16 (Revised in 2023), section 14 (2) (a).
[10] 2010 Cap. 225 (Revised in 2023).
[11] Trademarks Regulations, 2023.
[12] Agreement On Trade-Related Aspects Of Intellectual Property Rights (TRIPS) (1994) : World Trade Organization (WTO) (1995) : Paris Convention For The Protection Of Industrial Property (1990) : African Regional Intellectual Property Organization (ARIPO) (1976).
[13] Nairobi Java House Limited vs. Mandela Auto Spares Limited, High Court of Uganda, Civil Appeal No. 13 of 2015.
[14] Trademarks Act 2010 Cap. 225 (Revised, 2023) section 4 (1), (2), (3).
[15] 2010 Cap. 225.
[16] Trademarks Regulations, 2023.
[17] World Intellectual Property Organization. (WIPO). (2011). The African Fashion Design Industry: Capturing Value Through Intellectual Property,1.
[18] Ibid
[19] The Ministry of Justice and Constitutional Affairs. (May, 2019). National Intellectual Property Policy. Situation Analysis and Policy Development Process, 1, 1.0, 8.
[20] Nsubuga Ronnie. (2025). A Guide to Intellectual Property for Uganda’s Clothing and Fashion Design Industry. Trademarks. What Does this mean for me? 03, 17.
[21] The Ministry of ICT and National Guidance of Uganda. (January 2025). Guidelines for Managing Intellectual Property Rights of Locally Developed IT Systems, Applications, and Innovations. Information and Communication Technology Intellectual Property Guidelines. Intellectual Property Administration, 2.0, 2.3.
[22] The Ministry of Justice and Constitutional Affairs. (May, 2019). National Intellectual Property Policy. Situation Analysis, 1.2, 12 – 13.
[23] As amended, Article 126 (1).
[24] 1996 Cap. 16 (Revised 2023) section 14 (2) (a).
[25] 2010 Cap. 225 (Revised, 2023), section 1(1).
[26] Ibid
[27] Cap. 217 (Revised, 2023)
[28] P.G. Osborn, LLB. (1927). A Concise Law Dictionary for Students and Practitioners with Summaries of the Leading Cases and a Translation of Roman Law Terms and Latins Maxims. Page 283
[29] 2010 Cap. 225 (Revised, 2023), section 1(1).
[30] Anglo Fabrics (Bolton) Ltd and Ahmed Zziwa vs. African Queen Ltd and Sophy Nantongo, High Court of Uganda, Commercial Division, Civil Suit 0632 of 2006
[31] 2010 Cap. 225 (Revised, 2023), section 4(1)
[32] 2010, Cap. 225 (Revised, 2023), section 4(2).
[33] 2010, Cap. 225 (Revised, 2023), section 4(3).
[34] 2010, Cap. 225 (Revised, 2023), section 4.
[35] 2010, Cap. 225 (Revised, 2023), section 5.
[36] Trademarks Act 2010, Cap. 225 (Revised, 2023), section 6 (1).
[37] Trademarks Act 2010, Cap. 225 (Revised, 2023), section 6 (2).
[38] 2010, Cap. 225 (Revised, 2023), section 7 (1).
[39] Trademarks Act 2010, Cap. 225 (Revised, 2023), section 16.
[40] Dipak Emporium vs. Bond’s Clothing [1973] EA 553 (C.A.).
[41] P.G. Osborn, LLB. (1927). A Concise Law Dictionary for Students and Practitioners with Summaries of the Leading Cases and a Translation of Roman Law Terms and Latins Maxims. Page 139 – 140.
[42] 2010, Cap. 225, (Revised, 2023), Part IV.
[43] Trademarks Act 2010, Cap. 225, (Revised, 2023), section 34.
[44] Trademarks Act 2010, Cap. 225, (Revised, 2023), section 35.
[45] Trademarks Act 2010, Cap. 225, (Revised, 2023), Part IV.
[46] Nairobi Java House Limited vs. Mandela Auto Spares Limited, High Court of Uganda, Civil Appeal No. 13 of 2015.
[47] Anglo Fabrics (Bolton) Ltd and Ahmed Zziwa vs. African Queen Ltd and Sophy Nantongo, High Court of Uganda, Commercial Division, Civil Suit 0632 of 2006.
[48] Civil Procedure Act Cap. 282 (Revised, 2023), section 98; Judicature Act 1996 Cap. 16 (Revised, 2023), section 37 and 42; 1995 Constitution of the Republic of Uganda as amended, Article 126 (2)(e).
[49] High Court of Uganda, Civil Appeal No. 13 of 2015.
[50] Ibid
[51] 09 Civ. 4373 (SAS) (JLC).
[52] Ibid
[53] Ibid
[54] High Court of Uganda, Civil Appeal No. 13 of 2015.
[55] Gucci America, Inc. vs. Guess?, Inc., et al. 09 Civ. 4373 (SAS) (JLC).
