Why You Should Hire A Trademark Attorney

CONSIDERING TRADEMARK REGISTRATION IN UGANDA? THIS IS WHY YOU SHOULD HIRE A TRADEMARK ATTORNEY

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. Read more

DANGERS OF USING UNREGISTERED TRADEMARKS AND BENEFITS OF REGISTRATION

DANGERS OF USING UNREGISTERED TRADEMARKS AND BENEFITS OF REGISTRATION

What is a trademark?. 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

www.lawyers-uganda.com

Email: angualia@lawyers-uganda.com

Mobile Telephone: +256774477656

(Trademarks, company and investment law)

ASSESSMENT OF LIKELIHOOD OF CONFUSION IN TRADEMARK OPPOSITION PROCEEDINGS IN UGANDA

By Ninsiima Irene and Angualia daniel:  

ninsiima@lawyers-uganda.com/ angualia@lawyers-uganda.com

An opposition to the registration of a trademark grounded on existence of a similar mark will be upheld by the Registrar of Trademarks or the court, where the opponent establishes a likelihood of confusion to an average consumer in the territory where the earlier mark is protected. Likelihood of confusion is the possibility that an average consumer will be unable to distinguish goods or services bearing the earlier mark from goods or services bearing the contested mark from a different origin because of identity or similarity of the marks and identity or similarity of the goods or services covered by the mark.

hirelaw - ASSESSMENT OF LIKELIHOOD OF CONFUSION IN TRADEMARK OPPOSITION PROCEEDINGS IN UGANDA - Angualia Busiku & Co. AdvocatesThe Trademarks Act 2010[1] prohibits registration of identical or resembling trademarks, and confers the exclusive right to the use of a trademark by the registered owner.[2] The protection given to a registered owner of a trademark is based on the essential function of a trademark which is not to describe the goods or services but rather to indicte their source or origin. According to Kerly’s Law of Trademarks and Trade names;[3] the essential function of a trademark is to guarantee to the consumer or the ultimate user of the origin of the goods or services by enabling him without any possibility of confusion to distinguish that product   from products which have another origin. Thus the law prohibits registration of identical or resembling trademarks, except as otherwise provided. Read more

DOES UGANDA RECOGNISE AND ENFORCE TRADEMARKS FROM COUNTRY OF ORIGIN?

By Ninsiima Irene and Angualia Daniel

landmark tp - DOES UGANDA RECOGNISE AND ENFORCE TRADEMARKS FROM COUNTRY OF ORIGIN? - Angualia Busiku & Co. AdvocatesThe Paris Convention for Protection of Industrial Property, 1883 is the International Legal Instrument that provides provisions applicable to recognition and enforcement of Trademarks registered in country of Origin. Uganda is a contracting party to the Paris Convention for Protection of Industrial Property, 1883, and its domestic legislation recognises the provisions of the convention above. Uganda’s domestic legislation on recognition and enforcement of trademarks from country of origin is in pari materia with the provisions of the convention above.

The Convention recognises the international law principal of territoriality and states under Article 6 that a trademark duly registered in the country of union shall be regarded as independent of marks registered in other countries of union, including the country of origin. The convention makes it clear that registration of a trademark in the country of origin or any country of union does not of its own take away the right of any other person to register the very mark in any other member country of union. Under Article 6 (1) of the Convention, recognition of a trademark in a country of union is dependent on the domestic legislation of such member country of union where the trademark is sought to be enforced. Thus, registration of a trademark in a country of origin or any other country of union does not per se grant recognition of such trademark in another country of union unless the requirements/ conditions of that country’s domestic legislation, where the trademark is sought to be enforced are met. Read more

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. Read more

Exclusive Rights to Use Trademark as a Whole

EXCLUSIVE RIGHTS TO USE TRADEMARK AS A WHOLE AND NOT IN PARTS

trademark2 - Exclusive Rights to Use Trademark as a Whole - Angualia Busiku & Co. AdvocatesIt is a well established principle in trademarks law that the exclusive right to use a trademark applies to its use as a whole and not in parts. Many a times a trademark can be a composite trademark having various elements in it, and when the trademark is registered, the protection is provided to the mark as a whole and not in parts.

The principle was recently reinstated by the commercial court division of the high court of Uganda in the case of Tuskys (U) Limited Versus Tusker Mattresses Uganda Limited. Tuskys (U) Ltd, registered a trademark “TUSKYS” in respect of goods in Class 18. On the other hand, Tusker Mattresses Ltd a Kenyan registered holding company of Tusker mattresses (U) Limited registered a trademark in Class 16 in the name and style of: “Time To Go TUSKYS Your Friendly Supermarket”.  Tusker Mattresses Uganda Limited which was assigned the trademark runs retail chain supermarkets in Kampala under the said trademark. Tuskys (U) Limited brought the suit alleging that its trademark was being infringed by the defendant who was operating its supermarkets under the name “TUSKYS”. It sought for a permanent injunction restraining the defendant from any further use of its registered trademark among other reliefs. Read more

Trademark Protection In Uganda

Trade mark protection:

trademark-registrationProvision is made in the Act for the registration of trade marks for goods and for services. However, as the Rules under the old Act are still in force, they make no provision for the classification or registration of services.

The Act also provides for certification marks as well as for defensive registration of trademarks, and for the registration of series of trade marks.

The Act further provides for the register to be pided into two Parts, Part A for trademarks which are distinctive, and Part B for trademarks which are capable of distinguishing.

Read more