HOW DO I HAVE A TRADEMARK RECOGNISED AND PROTECTED IN ONE OR SEVERAL AFRICAN STATES

By Ninsiima Irene: Email: ninsiima@lawyers-uganda.com
Regional protection of trademarks in African states that are member states to the Banjul Protocol on Marks is achieved through registration of a trademark(s) in a member state (s) through ARIPO secretariat offices or directly through the Intellectual Property Office of the member state. The African Regional Intellectual Property Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among African States on Matters of Intellectual Property is entrusted with the registration of marks and the administration of such registered marks on behalf of the Contracting States.
law rights - HOW DO I HAVE A TRADEMARK RECOGNISED AND PROTECTED IN ONE OR SEVERAL AFRICAN STATES - Angualia Busiku & Co. AdvocatesThe Banjul protocol in line with the ARIPO’s objectives was adopted to promote the harmonisation and development of intellectual property laws and to establish common services necessary for the co-ordination, harmonisation and development of intellectual property activities affecting its members. The protocol was adopted on November 9 1993 at Banjul and entered into force on March 6 1997. As of today, it has been ratified by a number of African States that include; Uganda, Kenya, The United Republic of Tanzania, Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Zimbabwe, Gambia, Ghana, Kenya, Mozambique, Sierra Leone, Sudan and Zambia. The protocol provides a centralised trademark registration procedure.
Direct registration in a member state is done by an application to the Intellectual Property Office of such member state and the application is considered basing on the domestic legislation of such member state and its requirements. This is in line with the Paris Convention for Protection of Industrial Property, 1883, which incorporates the principal of territoriality and allows a sovereign state to be able to decide on whether a given trademark should be registered basing on its national laws.
All applications through ARIPO Secretariat for the registration of a mark are filed either directly with the Office or with the Industrial Property Office of a Contracting State by the applicant or his duly authorized representative who then transmits the application to the secretariat. Where the applicant seeks to have his mark(s) protected in several countries, such countries have to be designated on the application. The application is considered by the secretariat and once it meets all the formal requirements, it is forwarded by the secretariat to each designated state. Upon receipt of the application, the designated state then considers the application basing on its national laws.
An application for registration of a Mark which has been accepted by any designated State is then published in the ARIPO Marks Journal as having been accepted by the designated State or designated States concerned. At any time after the publication in the Marks Journal of an application as accepted by the designated State or designated States but before the registration of the mark by the secretariat, any person may give a notice of opposition to the application for registration in a designated State or designated States. Once notice of opposition is lodged, the application is treated according to the opposition procedures laid down under the national laws of the designated State or designated States concerned.
Where no opposition has been made or where it has been successfully defended, the mark(s) is registered by the Secretariat office three months after the publication in the Marks Journal. The registration is then recorded in the Marks Register and the Secretariat Office issues to the applicant a certificate of registration. The fact of registration of a mark is then published in the Marks Journal.
The registration of a mark remains valid for a period of 10 years from the filing date and may be renewed for further periods of 10 years.  The renewal of the registration must be effected on or before the date of expiration of the original registration or of the last renewal of the registration though a grace period of 6 months is allowed, in either case, on payment of a surcharge.
The registration of a mark by the ARIPO Secretariat has the same effect in each designated State, with respect to rights conferred by the mark, as if it was filed and registered under the national laws of each such state. The national laws of each Contracting State apply to the cancellation of a registration, whether based on non-use or any other grounds.

Exclusive Rights to Use Trademark as a Whole

EXCLUSIVE RIGHTS TO USE TRADEMARK AS A WHOLE AND NOT IN PARTS
trademark2 1 - Exclusive Rights to Use Trademark as a Whole - Angualia Busiku & Co. Advocates

It 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.
While agreeing with Tuskys (U) Limited, court stated that there was no doubt that the word “TUSKYS” which is the plaintiff’s mark also stands out in the mark used by the defendant. If the two marks are put side by side as demonstrated below the words “Your Friendly Supermarket” in the mark used by the defendant would distinguish the marks because one would know that that of the defendant is a supermarket as the mark suggests. That if Tusker Mattresses (U) Limited used the trademark assigned to it without leaving out the words “Time To Go Your Friendly Supermarket” it would not cause any likelihood of confusion. The defendant’s abandonment of the mark assigned to it and adoption and use of the mark “TUSKYS” singularly made it identical to the plaintiff’s mark. Tusker Mattresses (U) Limited was ordered to revert back to the use of its assigned trademark “Time To Go TUSKYS Your Friendly Supermarket”.
Court reiterated the concept of considering trademarks as a whole. The proprietor gets exclusive right to the use the trademark as a whole. In the same way, the proprietor cannot preclude others from using any part of the trademark independently or in a combination of difference words altogether. To claim rights over any part of such trademark, the proprietor must apply for registration of such part as separate trademark.

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.

      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.
      The Convention under Article 6 (2) requires a party seeking recognition and enforcement of its trademark in any country of union to make an application for registration of such trademark in the member country of union. This may be done irrespective of whether the same trademark is registered in the country of origin or not.  The application is considered for registration depending on the domestic legislation of the member country where the application is made and its requirements.
      Such applications in African States like Uganda, which are members of the Banjul Convention may be done through ARIPO or may be made directly to the trademark registry of the member state where recognition and enforcement is sought. The African Regional Intellectual Property Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among African States on Matters of Intellectual Property has the capacity to hear and determine applications for registration of trademarks in its member states which are parties to the Banjul Protocol on trademarks. Article 2 of the protocol as amended in 2004, provides for persons seeking registration and protection in member states to file an application for registration either directly with ARIPO or with the industrial property office of the contracting state where recognition and enforcement is sought.
      Thus, a person seeking recognition and enforcement in Uganda of a mark from country of origin may make an application through the ARIPO secretariat or directly in Uganda with the Intellectual Property Office; the Uganda Registration Services Bureau.
      The domestic legislation on trademarks in Uganda is the Trademarks Act 2010. The Act provides the procedure for registration of trademarks. Section 7 (1) provides  that a person who claims to be the owner of a trademark used or proposed to be used by him or her and is desirous of registering it shall apply in writing to the registrar for registration in Part A or Part B of the register. Registration in part A or B of a trademark relating to goods or services confers upon the person registered as owner the exclusive right to the use of the mark in relation to such goods of services. It is only upon registration that a trademark, whether local or from country of origin is given recognition and protection in Uganda. The law expressly states that no action may be brought in respect to an unregistered trademark.
      This legal position has been tested in courts and in the landmark case of Kampala Stocks Supermarket Co Ltd V Seven Days International Ltd HCCS NO. 112/2015, the plaintiff applied for and registered various trademarks bearing Chinese symbols and words under part A of the register, which trademarks identify an assortment of goods that the plaintiff trades in. The defendant a Ugandan trader procured goods bearing similar marks from the open market in China, which goods come with their manufacturer’s marks. The plaintiff sued the defendant seeking a permanent injunction to restrain the defendant, its agents or workmen from selling, offering for sale, or dealing in goods bearing the registered trademark of the plaintiff, and for an inquiry into the damages and account for profits, delivery up and destruction of the offending goods and damages.
      The plaintiff’s contention was that it registered under part A of the Trademarks Act 2010 as owner and has the exclusive rights to the use of the trademarks. The defendant on the other hand contended that the plaintiff who is also a trader in similar Chinese products registered various trademarks in Uganda relating to goods and services both the plaintiff and defendant procured from an open market without altering the original manufacturer’s trademarks. The defendant further contended that the plaintiff well knowing that the trademarks relate to goods generally traded in, with selfish interest of creating a monopoly, registered these marks in Uganda. The defendant argued that if such registration is not cancelled by court, it would have the implication of preventing manufacturers from China and bonafide traders like the defendant from importing these products into the Ugandan market. The defendant further argued that the plaintiff is not a manufacturer and without the sole distributorship or authorisation from the Chinese owners of the mark cannot lawfully register them in Uganda; and thereafter enjoy exclusive rights that accrue to trademark owners.
      The defendant also contended that the plaintiff’s actions were in bad faith intended to eliminate genuine trade competition. The defendant further contended that intellectual property rights should not be used as a tool to stifle genuine trade competition and that such practice would also be against the spirit of The Paris Convention  for the Protection of Industrial Property 1883 and the WTO agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1994, the  International Legal Frameworks  aimed at protection against unfair trade practices in intellectual property which Uganda is signatory to. That countries which are State Parties to the Paris Convention and the WTO TRIPS Agreement of 1994; of which Uganda is one of them; have obligated themselves to prohibit unfair  competition and trade practices (Article 10 of the Paris Convention  and Article 2 of the WTO TRIPS Agreement). The two documents are intended among other objectives to reduce impediments to international trade and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.
      Court in its decision restated the law in the The Paris Convention for Protection of Industrial Property, 1883 above and the relevant provisions of the Trademarks Act 2010 above and held as follows;
      • That the plaintiff had lawfully registered the contested trademarks in Uganda in accordance with domestic legislation, in part A of the register which gave him the right to the exclusive use of the marks and to forbid any other person from using similar marks in Uganda in relation to the same goods or services without its authorization or consent.
      • That Uganda recognizes the principal of territoriality as expressed in the spirit of Article 6 of the Paris Convention for Protection of Industrial Property, 1883 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 and as such the existence or registration of similar marks in China did not bar the plaintiff from registering similar marks in Uganda, since the same marks did not exist on the Ugandan register.
      • That the Ugandan domestic law does not forbid the registration of a trademark on the ground that it could be registered elsewhere; however, it accords a right to register by an owner registered in a country of origin.
      • That the law in Uganda offers an opportunity to any person aggrieved by registration of a trademark to make an objection/opposition at the time an application for its registration is made when the application is nationally advertised, and the defendant did not. That when an application for registration of a trademark is made, it has to be published and the law gives any person the right to give notice of opposition/ objection to the registration of the mark sought to be registered and it is published for the public to have an opportunity to object to it.
      • That after the trademark has been registered, the only person who has locus standi to challenge its existence on the register is the registered owner or some other person having a proprietary right in such trademark like a licensee or agent and such a person may bring an application for deregistration under s.45 of the Trademarks Act 2010.
      • That the defendant had no locus standi since it was not the owner of the trademarks and neither did it have any proprietary rights in the marks. That the only person who had locus standi would be the Chinese owners of the trademarks who would have to bring their application for deregistration under s 45 above and within seven years from the date when the plaintiff had such marks registered. A trademark entered in part A of the register is regarded as conclusive as to validity after seven years of being on the register.
      In conclusion therefore, recognition and enforcement of a trademark in Uganda, be it local or from country of origin can only arise if;-
      • The owner of the mark gets it registered on the Uganda trademark register either through ARIPO or directly through the Intellectual Property Office, the Uganda Registration Services Bureau.
      • The owner objects to the registration of a similar mark on the register, and undertakes and thereafter registers the mark on the register.
      • The owner applies for deregistration of a given mark on the register that is similar to its mark and registers that mark as owner on the register.

      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)

      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.