of the affidavit of Charles Njenga. He further submitted on the other marks and colours in the get
up. According to a book by Nard, Barnes and Madison, The Law of Intellectual Property at
page 40 thereof traders package or design their products in such a way that attracts their
customer‟s attention and indicates to customers that the product comes from a unique place. The
definition of a mark under section 1 of the Trade Marks Act 2010 includes any mark or devise.
This may include a combination of words. The definition of a mark is material for its protection
under the Trademarks Act 2010.
The crux of the applicant‟s complaint in the use of a similar getup by the respondent is that the
use of similar marks with trade dress or combinations of colours and designs amounts to passing
off at common law or infringement of a trademark already registered. A mark registered under
Part A acquires the protection of exclusivity under section 36 of the Trademarks Act 2010.
Similarity may be assessed by the judge. In Smith Kline and French laboratories ltd (SKF) vs.
Sterling Winthrop Group Ltd [1975] 2 All ER 578 the definition of a trade Mark was
considered. Section 68(1) (UK Act has the same wording as our section 1 (1) of the repealed
Trade Marks Act cap 217 or section 1 of the Trademarks Act cap 2010 of Uganda. The court
noted that the mark had to be distinctive and adapted to distinguish the goods from that of other
traders/manufacturers.
Per Lord Diplock
The colour combinations have thus been shown by undisputed evidence to serve the
business purpose of a trade mark. They do precisely what a trade mark is meant to do:
they indicate to potential buyers that the goods were made by SKF and not by any other
manufacturer. ...„...
“My Lords, I see nothing in this context that requires one to exclude from the definition
of „trade mark‟ a mark which covers the whole of the visible surface of the goods to
which it is applied. Such a mark is as capable of indicating a connection in the course of
trade between the goods and the proprietor of the mark as it would have been if it had
only covered half or three-quarters of the visible surface. No one has been able to point to
any business purpose that would be served by drawing a distinction between marks that
cover the whole and those which cover part of the surface. For my part I should be loath
to ascribe to Parliament an intention to do anything so irrational.
However, a mark may fall within the definition of trade mark but may still not be
registrable. So it is necessary to see whether there is anything in the provisions of the
1938 Act dealing with registration that would exclude from registration a mark which
covers the whole of the visible surface of the goods to which it is applied. Section 9 states
what a trade mark must consist of in order to be registrable in Part A of the register. The
colour combinations used on the capsules and their pellets for which registration is
sought by SKF come under the heading „any other distinctive mark‟ in s 9(1) (e). I shall