Judith Babirye Kagere

Judith is a Junior Associate at the firm of the Intellectual Property, Technology, Media and Telecommunications (TMT) and Corporate and Commercial Practice.

She is a lawyer with a law degree from Makerere, University Kampala and holds a LL.M from The University of Dundee, United Kingdom, majoring in E- Commerce, Intellectual Property and Project Financing.

Some of the major transactions she has handled are below;

1. Protection of the Ankole Cow as a geographical indication for the Ankole people in Uganda. She is an associate member of the KTA team that is currently advising on the registration of the Ankole Longhorn Cattle as a Geographical Indication locally through Uganda Registration Services Bureau (URSB) and internationally at WIPO through the Libson System. https://observer.ug/news/headlines/59041-long-horned-ankole-cow-to-be-patented .
2. She has advised on the commercial framework for a leading e commerce platform in Uganda and one of Africa’s largest hypermarkets. This was in order to fulfil the operations for supply of products for the online supermarket business for both parties by using the supermarket’s range for orders as placed by customers on the app or websites.
3. A trademark Registration leading to 24 Trademark Certificates (3 marks in 8 classes) for a Chinese company. The matter involved some complexities as the client needed to be adequately advised on the relevant classes as regards their marks for a construction company, the benefits of a word mark vis a vis a logo, the relevant fees for a foreign company in a separate application and application for Registrar’s advice as regards interpretation, disclaimers and conditional acceptances. This will lead to the registration of 3 marks in 8 classes and obtaining of 24 trademark certificates for the Chinese company.
4. Advised on the review and amendment of a PCT Application for a pharmaceutical patent which was initially rejected by Uganda’s IP Registry. Importantly, she advised on the timelines for lodging the amendments to the patent claim, the option of filing a divisional and conversion of a regional application.
5. IP Advisory to a nongovernmental organization as regards 3D printing of prosthetics for under privileged children, copyright for the materials developed for use in the education hub and child centre and general IP advisory for the organisation.
6. She has provided e- commerce legal advisory on data protection, 3rd party logistics for e commerce companies, commercial frameworks for drop off stations given the e commerce framework in Uganda, micro finance lending for vendors on e- commerce apps, 2 factor authentication, transport and air freight agreements, store credit, returns and licence compliances.
7. She has advised on NITA-U certification for E commerce companies. This involved advisory and preparation of the adequate data protection, privacy, consumer protection policies. In addition, advisory on the requisites of an IT Audit by the Regulator, that involves an explanation of their IT system, the security audit, protection of their intellectual property proprietary rights, duration and renewal of these licences.
8. She has advised an insurance company on intellectual property infringement for software worth $2M. She advised on establishment of ownership of the software, causes of action of the software infringement and possible defences from the other party. It also involved advisory on integration of the system, any licences that could have been obtained, and whether the client was able to sustain a suit for software infringement upon establishment of ownership of the software.
9. Advisory to the firm’s dispute resolution team on actions for passing off and trademark infringement. This also has involved causes of action for passing off, unjust enrichment, initial concept confusion and deception.
10. Advisory on establishment of a smart city. She has provided advisory on setting up a smart city from one of Uganda’s recently declared cities. This involved realisation of the need to deploy IoT infrastructure to implement sustainable development for a cohesive city.
11. She has advised on trademark registrations for e commerce companies & ARIPO applications under the Banjul Protocol. She completed the trademark registration for an agricultural online platform on registration of their mark in 10 designated states in Africa. In addition, she has also advised on trademark de registrations and issuance of cease and desists.
12. Advisory on trademark assignments for an e- commerce company. The advisory also included tax aspects in regards using a brand name and systems of a foreign company that has imported a service and is such subject to VAT.
13. Intellectual Property advisory for a health research institute. This project proposed opensource software and so the IP counsel included aspects of protecting intellectual property and maintaining integrity of data.
14. Advisory on IP aspects to a leading nonprofit organization that uses innovative digital technology and empowers people with free legal information so that they can use it to develop legal solutions for their justice needs. She also reviewed their data policies for intellectual property aspects given that the NGO mainly operates online.
15. Advised on the matter of Winnie Asege v Opportunity Bank and Another H.C.C.S No. 756 of 2013 concerning image rights on Appeal.
16. She has advised a leading regional insurance company on the acquisition of a USD 500,000 worth of object code and source code in a computer software program(s) and the web- based core system and included all its intellectual property and intellectual property rights. The transaction synchronized the relationships of the different sets of contractual documents to provide for any cross defaults and cross clauses within the contractual framework.
17. She has advised on post contractual intellectual property rights for the supply, configuration, implementation, support and maintenance of a software worth USD 3.4 million.
18. Advised an international foundation on a national cybercrime assessment of a business model. This included an analysis of cyber security laws as regards enforcement, criminal intent and consequences of non- compliance under the Data Protection and Privacy Act, 2019.
19. She has advised an e commerce company on creation of a e- commerce freight platform for shippers and transporters to connect with Transporter/ Carriers to be able to arrange for multi modal transportation services. This is an e commerce online directory that is a discovery platform and it involved factoring in collateral insulation, invoice discounting and value- added services. This included providing strategic counsel on the intellectual property rights subsisting on the applications as they run in two East African countries.
20. IP Advisory to a financial campaign. This included advise on the use of intellectual property material such as models, marks and jingles. This advisory enabled the campaign to roll out without infringing on any third party’s IP.
21. Conducted a training on data protection, privacy, security, procedures upon a data breach and building resilience in a company upon a data breach.
22. She has advised a non-governmental organisation on intellectual property rights and protections arising from copyright and 3D printing of prosthetics for children with disabilities.

Construction

Currently advising on a joint venture between two foreign Chinese companies for undertaken road civil works in Uganda. In addition, due diligences for acquisition of a number of stone quarries.

She has advised on a USD 2.5M due diligence and acquisition of a quarry on a block of land, preparation and review of project contracts such as those for gravel mining, concessions, borrow pits, water supply, easements, leases, replies to complaints made to project donors and tax advisory on exempt projects.

Corporate & commercial advisory

Advisory on a proposed company amalgamation and completed a company de registration for a Chinese company in Uganda.

Publications available at www.ktaadvocates.com

1. IP alert on intellectual property rewarding creativity in video games. This article discusses a summation of the IP aspects in a video game ad infringing issues that may arise.
2. SEE IT IN 3D: virtual reality in health care, which analyses intellectual property in virtual reality and its possibilities for health care in Uganda.
3. Room for one more: Employment in the gig economy: an analysis of UBER BV v. ASLAM & Other [2021] UKSC 5, which analysed the UKSC decision on modern employment and how the balances and boundaries of employment have been tested by the gig economy.
4. The liability of ISP providers; an analysis of Multichoice Kenya Limited v. Safaricom & Jamii Telecom Limited.
5. Liquidated damages in tech contracts; an analysis of the UKSC decision in Triple Point Technology, Inc v. PPT Public Company Limited [2021] UKSC 29
6. Recasting IP management for SMEs; building your IP portfolio for World IP day, 2021.
7. Genetic resources protection for our green future for World IP day 2020.
8. E Commerce in Uganda: where does Uganda stand so far? Presented to the International University of East Africa on 20 August, 2021 at the IUEA Tech summit.
9. IP Alert on the Kampala Protocol on voluntary registration of copyright and related rights.

Webinars presented

1. Headed a training on patent and copyright registrations to the Ministry of Science, Technology and Innovation on 31st May, 2021.
2. Conducted a training on intellectual property to the Internet Society of Uganda on 04th November, 2021.
3. Presented to the Rotaract Club of Kampala South on intellectual property commercialisation and protection on 17th September, 2020.
4. Presented comments to Ministry of Information, Communication and Technology (ICT & NG) on the draft Data Protection and Privacy Regulations in September, 2020.
5. Presented comments at the consultative meeting on the National Payment Systems Act, 2020 to the Finance Committee in March, 2020.
6. Presented at the Lexis Nexis innovation and tech fest on the power of technology and digital transformation, see through the IP lens on a triple panel with Karim Anjarwalla of ALN Kenya and Toniminyi Owolabi of Olaniwun & Ajayi (NG).
7. E Commerce in Uganda: where does Uganda stand so far? Presented to the International University of East Africa on 20 August, 2021 at the IUEA Tech summit.
8. Conducted a master class in August 2019 at the Kampala Innovation week for intellectual property protection for start- ups and innovators.
9. Conducted a data protection training to the management and staff at SafeBoda Academy on 28th May, 2021.
10. Conducted a training in intellectual property protection to Barefoot law in September, 2020.
11. At the KTA copyright clinic 2020, she chaired a panel on “Art butters my bread”. The clinic was designed to triage and table copyright protection, commercialisation and enforcement. The panel included Brain Kajubi, David Tayebwa, Sewa Sewa and Peter Kagayi.