Trademark registration procedure in Uganda

Trademark registration procedure in Uganda
  • Conduct a Search. A person who intends to apply for the registration of a trademark carries out a search in the trademarks registry to ascertain whether the trademark exists in the register and if not, whether it is suitable, that is, it is not offensive.
  • Advice by the Registrar. A person may if he or she wishes obtain advice from the registrar as to whether the proposed trademark appears to the registrar to be inherently adapted to distinguish or capable of distinguishing goods or services of the proposed undertaking from those of other undertakings. The registrar shall then advice accordingly.
  • Filing of Application for trademark registration. The application is filed upon payment of application fees. The application should contain the mark proposed to be used, the class of goods or services, the name, address and the signature of applicant. If the applicant is a foreign company, a power of attorney or form of authorization to an advocate of the High Court of Uganda will be sufficient.
  • Examination of application. The registrar will then determine the trademark is registrable and whether it conflicts with prior existing registrations or applications for trademark registrations.
  • Publication of Application. If the application is accepted by the registrar, the application will be advertised in the official government gazette for 60 days.
  • Certificate of registration. If there is no opposition after the expiration of sixty days of the advertisement, the Registrar shall upon payment of the necessary registration fees by the applicant enter in the trademark register and issue certificate of registration of the trademark
Fees payable for trademark registration
The fees payable depends on whether the trademark is a local or foreign trademark.
The other determining factor is whether the applicant intends to use an attorney in the process of trademark registration or will follow up the trademark registration process without the help of an attorney. The amount payable in professional fees depends on the attorney engaged in the registration process.

Opposition of trademark registration
There are instances when the trademark which is intended to be registered conflicts with an already registered trademark. The law allows such a person to oppose the registration of a trademark that he or she is of the opinion that it conflicts with their trademark.

Procedure for opposition of trademark registration

  1. Filing notice of opposition. The opposing party files a notice of opposition and statement of grounds with the registrar of trademarks within sixty days from the date of publication of the trademark application. The applicant is then sent a copy of the opposition documents for a response.
  2. Counterstatement filed by applicant. The applicant files a counter statement within thirty days. The counter statement is then sent to the applicant for reply if any and further evidence.
  3. Hearing of the opposition and decision. The opposition is then set down for hearing and a decision is made by the registrar. Any party aggrieved by the decision of the registrar has a right through his or her advocate to appeal to the High Court of Uganda.

      Dangers of Using Unregistered Trademarks

      DANGERS OF USING UNREGISTERED TRADEMARKS AND BENEFITS OF REGISTRATION
      dangersWhat is a trade mark?. Different authorities have given the meaning of a trademark. The Trademarks Act 2010 of Uganda defines a trademark to mean: 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.
      For every successful and time tested corporate brand (trademark), that everyone wants to associate with, behind the scenes, a lot of effort and resources have been sunk into intricate trademark development and aggressive protection. Company brands and trademarks are amongst a company’s valuable assets. A study done by the UK’s IP office reveals that an estimated 6% of most company investments are spent in company brand protection.
      Branding starts and centers around your use of distinctive images, symbols, colors and styles, and caricatures, which most appropriately separate and preposition your goods, or services as unique from others on the same market, giving both a protection to your customers and also acquiring brand image and build up brand loyalty amongst your consumers.

      Dangers of using unregistered trademarks
      Until a name or logo is registered as a trademark, you cannot be certain that it belongs to you. If another person or business registers the mark first, you may find yourself in the highly inconvenient and very costly position of becoming embroiled in litigation and potentially having to withdraw your products, redesign your packaging and marketing literature, and pay damages or an account of profits to the registered trademark owner. Besides the quantifiable costs, you could also risk any goodwill that you may have established in the brand name over the years, over a product that you have painfully taken years to create, just because you didn’t take the extra step of registering it.
      Available research from world intellectual property organisation shows that over 80% of SMEs fail to register their trademarks. The majority think that it is not important to their business, with others citing lack of time, lack of understanding of the process of registration and costs associated with registration. By failing to register their trademarks, these businesses are not only damaging their brands and reputation, but also put their businesses at risk and in the end, loose out in the market battle.
      Benefits of trademark registration
      When you register your trademark, you ensure that you are in a position to prevent others from using or registering a similar one and that is the key to maintaining a strong brand.
      Section 34 of the Trademarks Act 2010 is to the effect that a person may not institute proceedings to prevent or to recover damages for an unregistered trademark. Section 35 saves the right of action against a person for passing off goods or services as the goods or services of another or the remedies in respect of the right of action.
      Protection under section 35 is only afforded to an unregistered trademark where a mark has acquired a substantial reputation. Even then, the hurdles to be over come in order to succeed in enforcing those unregistered rights against a third party, and the associated costs, are such that many businesses are inhibited from taking the legal action, and those that do, often fail.
      By registering its trademark, a business greatly improves its ability to prevent a third party from using or seeking to register conflicting marks, and to seek appropriate remedies, such as an injunction and or damages, in the case of an infringement.
      Trademark registrations are also valuable, transferable assets, which can be used as negotiating tools in business transactions and as security for financial transactions. Intellectual capital is recognised as the most important asset of many of the world’s largest and most powerful companies; it is the foundation for market dominance and continuing profitability of leading companies. It is often the key objective in mergers and acquisitions.
       What to consider while developing a good trademark
      Before coming up with the appropriate idea of a trademark, ask yourself, what your particular brand is and what word best expresses your brand. Also imagine what typography conveys the feeling of your brand. For example, what colors are consistent with your brand’s personality?. Your trademark can include a graphic, and if so, choose graphic expression which will best complement your brand. Finally, ask yourself the hard question on whether the trademark helps distinguish your brand from the competition?.
      It is important that every business, however small, urgently puts in place an effective and proactive trademark development and registration strategy to ensure that all its brands are properly protected, and that those it enters into contract with to use the those brands are not going to land them in trouble with other trademark owners.
      The use of effective trademark watching and monitoring procedures is also fundamental to the maintenance of a strong and enforceable trademark in the market; it helps to identify potential sources of conflict, including potential infringers, and prevents the dilution of one’s trademarks.
      Where to find help
      You should seek the advice of a trademark attorney for help in developing or implementing your trademark protection strategy. The trademark attorney should be in position to guide you through the trademark selection and registration process and advice on all aspects of the protection and enforcement of your trademarks.
      Angualia Daniel
      Managing Partner
      M/s Angualia Busiku & Co. Advocates
      Plot 3 Parliament Avenue, Raja Chambers
      www.lawyers-uganda.com
      Email: angualia@lawyers-uganda.com
      Mobile Telephone: +256774477656
      (Trademarks, company and investment law)

      Why You Should Hire A Trademark Attorney

      CONSIDERING TRADEMARK REGISTRATION IN UGANDA? THIS IS WHY YOU SHOULD HIRE A TRADEMARK ATTORNEY
      hirelaw 1 - Why You Should Hire A Trademark Attorney - Angualia Busiku & Co. Advocates

      Trademark owners who attempt to file and prosecute their own trademark applications work on the believe that by not hiring a trademark attorney, they will save on the attorney fees. From experience, these trademark owners end up spending more money in the process. They make many mistakes in the process and pay trademark attorneys later on to correct the mess. It is understandable that many times, this group of trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non trademark attorneys.

      I have attended to many clients that have filed their own trademark applications, and some that have used non-attorney services. These clients are usually up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application, or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them. In over 60% of the cases, I have had to file fresh trademark applications on learning that the non-trademark attorney did not file the right documents or missed a crucial stage in the process that rendered what was done of no effect.
      Trademark owners may believe that filing and prosecuting a trademark application is a simple process. Admittedly, the filing of a trademark application is much more straight forward if the necessary steps are followed properly. Simple steps like trademark clearance may be ignored only to realize at a later stage that the trademark you are filing is already in existence or that it is similar to what is already in existence. The result is that you will face oppositions to your Applications. Even if you succeed in filing, the earlier registered trademark owners petition trademark office for cancellation of your trademarks.
      Proper filing and issued trademark can provide the trademark owner with significant protection for their intellectual property. For example, trademark portfolio for “Coca-Cola”. Coca-Cola has hundreds of trademarks and trademark applications all over the world. The brand is protected by numerous trademarks. 
      Trademarks are so important because they identify the source of a particular good or service. The trademark owner, if they do it right, has associated their good or service with a particular level of quality that they work hard to maintain. If the trademark owner does not protect their trademark, they may open themselves up to the danger of an inferior quality good or service being distributed under the same or similar name. Such acts cause consumer confusion in the marketplace and leads to dilution of the earlier trademark that was not protected through proper registration. Therefore, it is important for the trademark owner to file the application properly. The trademark owner should not rely on the services of non-trademark attorney to help them through the registration process. 
      The safest bet is to hire an attorney familiar with trademark prosecution to handle protecting your trademark assets. Of course, this means paying a legal fee, but I believe the legal fees involved in having an experienced attorney prepare, file and prosecute a trademark application pale in comparison to the cost of not having a properly protected trademark. This post is prompted by the recent increase I have encountered of fixing, or sometimes re-filing, trademark applications that have either been filed by the trademark owners themselves, by attorneys that do not specialize in trademark prosecution, or using the “assistance” of some websites that purport to file trademark applications for the trademark owner, without providing legal advice.

      Determine the Value of Your Trademark

      HOW DO YOU DETERMINE THE VALUE OF YOUR TRADEMARK?
      TRAD - Determine the Value of Your Trademark - Angualia Busiku & Co. Advocates

      In general, the value of a trademark is based directly on the trademark’s earning power. Where little or no income history is available, however, imagination, common sense and experience may be the best guides to apply in ascertaining a trademark’s value. In addition, studies of the industry in which the trademark will be used or the products marketed, market surveys of probable sale prices and expected profits, and opinions of industry experts may also be applied.

      The value of a trademark lies in the goodwill associated with that trademark. Goodwill is an intangible asset that provides added value to the trademark owner’s worth (such as a recognizable brand). However, in many cases it can be quite difficult to ascertain the goodwill and then place a true value on it at a point in time, because of the many variables that must be considered. For example, reasonable people can differ on future expectations, such as opportunities for increasing the value of the trademark and competitive threats and marketplace risks to the trademark.
      Some of the most common approaches to/methods of valuing a trademark are: (1) the income approach, which assigns a value to a trademark based on past and expected future profits associated with the mark; 
      (2) the market approach, which assigns a value based on comparisons of transactions (such as royalty rates) involving similar assets; 
      (3) the cost approach, which assigns a value based on the cost of creating a trademark and the cost of replacing the existing trademark with a trademark with the same market power; and 
      (4) the relief from royalty method, which estimates the expected royalty savings attributable to the ownership of the trademark. Other approaches to valuing trademarks are also used, depending on the nature of the transaction and the reason for the valuation. Licensed valuation firms can assist with valuation of trademarks by attributing a monetary value to a trademark.