Brian Kajubi

BACKGROUND

Brian is an Associate with the firm’s Intellectual Property Team and Litigation Team. He acts for and advises clients on the creation, registration, maintenance, protection, commercialization, and enforcement of intellectual property rights in Uganda. 

Brian is a licensed/registered Trademarks Agent /Attorney with Uganda Registration Bureau, (URSB) under the Intellectual Property Directorate, (Trademark Registry), and ARIPO with experience in trademark protection (searching and prosecution) and enforcement (oppositions, cancellations and infringements), copyright disputes, patent drawings and filings, company name objections, advertising complaints, image rights disputes, and domain name disputes. His expertise and experience in intellectual enforcement matters extends beyond Uganda, into Africa and other foreign countries, giving him the unique ability to offer clients global and holistic enforcement measures.

Brian has a great interest in the field of commercial litigation, with an emphasis on intellectual property, entertainment law and ICT.

He has taught law at Uganda Christian University, School of law and Makerere University Business School, Department of Business Law.

Brian is the Vice Chairperson of Uganda Law Society Intellectual Property Cluster, a member of the Legal Committee of Federation of Uganda Football Association (FUFA), where he advises FUFA on sports disputes and sports legal related matters, a member of the African Trademark Network. He is also the Chairperson of the Contracts Committee of Makerere University Business School, where he advises the entity on public procurement law.

Brian serves as the Chairperson the Uganda Olympic Committee/Commonwealth Games Uganda Elections Committee, and he is an external Examiner at the Law Development Centre (Bar Course) in Uganda.

He holds an Upper- Second Class LL. B (Hons.) degree from Uganda Christian University, Mukono and a Post Graduate Diploma in Legal Practice from the Law Development Centre. 

MEMBERSHIP IN PROFESSIONAL SOCIETIES

• Advocate, High Court of Uganda
• Member, Uganda Law Society
• Member, East Africa Law Society
• Vice Chairperson, Uganda Law Society Intellectual Property Law Cluster
• Member, URSB IP Directorate Users’ Forum
• Member, East African Law Society Intellectual Property Committee
• Member, East African Law Society Sports Law Committee
• Licensed Trademark Agent/ Attorney with Uganda Registration Bureau, (URSB) under the Intellectual Property Directorate, (Trademark Registry) and ARIPO.

professional qualifications 

• Postgraduate Diploma in Legal Practice, Law Development Centre, Uganda, 2016
• LL. B (Hons.), Uganda Christian University, Mukono, 2014
• Certificate in Sports Law & Arbitration Practice, Uganda Olympic Committee, 2019

career summary

2022 – date                 Associate, MMAKS Advocates, Uganda

2020 – 2022                  Associate, Nangwala, Rezida & Co. Advocates, Uganda

2016 – 2019                  Associate, Ntwali & Co. Advocates, Uganda

areas of expertise

• Intellectual Property 
• Commercial litigation
• Sports Arbitration and Practice
• Procurement law and Practice
• ICT– bias IP & Artificial Intelligence.

TOP MATTERS

• Acted for Brookside Limited and Fresh Dairy (U) in registration and renewal of their several trademarks as well as handling notable oppositions in protecting their well-known brands.

• Acted for Brookside Limited in a labour dispute against it by 110 former employees, for unlawful termination and redundancy, in which they sought compensation of UGX. 1.2 Billion. 

• Successfully acted for NBA Properties Inc. in a trademark opposition against the registration of a confusingly similar and deceptive mark and passing off, regarding their affectionately well-known “BAL” trademark that is associated with “City Oilers” basketball team in Uganda, plus “Basketball Africa League” which is operated by NBA Properties Inc and International Basketball Federation.

• Representing Kentucky Fried Chicken International Holdings LLC (KFC) in Uganda, in an action for trademark infringement, passing off and brand dilution against a local enterprise infringing on the client’s well known “KFC” trademark and get-up.

• Acted for The World Alliance of Young Men's Christian Associations in trademark oppositions and cancellation proceedings at the trademark registry (URSB) and in the High Court of Uganda, regarding the use, adoption and registration of its YMCA trademark & design, by a local entity in Uganda.

• Acting for The Coca-Cola Company, in an ongoing trademark opposition, against the registration of a confusingly similar and deceptive mark, regarding its “CAPPY” trademark

• Acting for Comité International Olympique, (Lausanne, Switzerland) in a trademark opposition against the registration of a mark that is confusingly similar to the client’s distinctive and fanciful OLYMPIC trademarks, commonly used in Olympic games. 

• Acting for Caterpillar Inc in a trademark opposition, against registration of a confusingly similar mark, regarding the client’s well-known “CAT” trademark.

• Acting on behalf of Twenty-three commercial banks in a suit filed against them seeking among other things, a declaratory order that levying of bank charges on any bank transaction is illegal and fraudulent and an order stopping the Commercial banks from levying those bank charges. 

• Acting for Her Royal Highness, Nnaabagreka Queen Sylvia Nagginda in a copyright infringement suit against a renowned media and publishing company for an unauthorized use, publication, and serialization of the client’s literary works in her autobiography book. 

• Acting for Price Costco International, Inc (Costco Wholesale Corporation) in an ongoing suit/court action for trademark infringement and passing against the use and attempted registration of its well-known “Costco” brand and trademark, by a Ugandan supermarket and business enterprise. 

• Successfully acted for Mandela Group of Companies Limited in a trademark cancellation and removal matter regarding their well-known SUPREME brand, where a third party’s Supreme trademark was cancelled on grounds of non-use, thereby allowing Mandela’s trademark to be registered.

• Acting for Liberty Group Limited, a multinational insurance, property, and financial services company in a trademark cancellation matter regarding their primary and well-known LIBERTY trademark in the insurance business.

• Acted for Victoria Hospital Limited in a suit against a Bank seeking to set aside a mortgage transaction and credit facilities of USD 5,500,000. 

• Acting for Mandela Group of companies Limited in a trademark opposition by Nelson Mandela Foundation for an order against the registration of Mandela Group of Companies’ trademark. 

• Acting on behalf of nineteen Commercial Banks in a copyright infringement suit. The firm's role is to defend the Bank from allegations of infringement of copyright by rolling out agent assisted financial services and use of POS based technology platforms for agency banking.
• Advising Quality Chemical Industries as retained external Counsel on routine Intellectual Property matters and registration of its several IP products/inventions under ARIPO and WIPO.

• Acted as counsel in a trademark opposition on behalf of The Procter & Gamble Company against the registration of a trademark similar to its well-known PAMPERS, PAMPERS & HEART device logo trademarks. 

• Acted for MOVIT Products Uganda Limited in a trademark opposition in China, against the registration of a trademark by a Chinese national which is similar to MOVIT trademark.

• Successfully acted for Exim Bank (U) Ltd in a suit against it brought by a customer, challenging the sale of the mortgaged property arising out of several credit facilities of USD 200,000, term loans of USD 3,900,000 and UGX. 800,000,000/= and appointment of a receiver.

• Advising and acting for a Ugandan scientist and university professor in registering and obtaining a Patent for her invention of DEEP LEARNING FOR AUTOMATED MOBILE MICROSCOPY DISEASE, under ARIPO protection.

• Advising Patagonia Inc. on the objection to the registration Patagonia as a State emblem under WIPO by Argentina, which is similar the client’s Patagonia trademarks.

• Successfully acted for ICEA Group, in trademark opposition against the registration of its several ICEA Lion trademarks trademark cancellations a third party’s infringing trademarks on the trademark register.

• Acting for Power Horse Energy Drinks GmbH in a matter of trademark cancellation and removal from the register, obtaining an order for the removal and cancellation of a registered trademark similar to the RED HORSE trademarks.

• Successfully represented and defended Spark Television against a claim for alleged breach of minimum broadcasting standards raised by a consumer. The jurisdiction of the regulator over Spark Tv’s actions visa-vis the complainant’s allegations, were successfully challenged.  

• Acting for Potamac Tobacco Company Limited in an on-going Trademark cancellation and objection to the registration of Supermark Cigarette, a confusingly similar Trademark, together with several ARIPO oppositions for Potomac Tobacco Company Limited

• Acting for Hugo Boss AG in an on-going ARIPO Trademark opposition to the registration of an infringing trademark.

• Acted for a court mediator in a suit for image rights infringement against a Visual, Audio production and record label company, for the use of the Plaintiff’s image to advertise a public concert without his consent.

• Acting for and defending Longhorn Publishers Ltd in a suit against it for alleged image rights infringement. 

• Acting for Makerere University Professors and authors of the book Cultures at Crossroads- Homosexuality and Human Rights in Uganda in an arbitration against Fountain Publishers. The primary role is to represent the authors’ rights, seek declarations and damages against the publisher for breach of contract and copyright infringement. 

• Collaborated with the Uganda Registration Services Bureau, Uganda Law Society, Multi-Choice Uganda, Uganda Communications Commission (UCC), Judicial Training Institute of Uganda and Vision Group, in conducting national trainings and sensitisation on intellectual property rights. 

• Successfully drafted the Intellectual Property Management Policy, Knowledge Management Policy and Research Policy Guidelines for Uganda Christian University (UCU) for purposes of creating a robust IP Management Portfolio, for effective creation, management and commercialization of different IP Rights between the University and its staff.
• Involved in the day-to-day application, registration, and maintenance of intellectual property rights for international and local proprietors.

• Involved in brand awareness, monitoring and discrete trademark investigations, through collaborations with professional investigators, as a tool/mechanism for brand protection on behalf of clients.