Different types of marks which can be registered in Uganda

Different types of marks which can be registered in Uganda
  1. A Service mark. This is a trademark that is used for advertisement of services. For example a hotel can register its mark for its services. Businesses use service marks to identify their services and distinguish them from the services of their competitors.
  1. A Collective mark. This is a trademark that distinguishes the goods and services of members of an association from those of any other undertaking. Collective marks usually belong to a group or association of enterprise. Their use is reserved to the members of such group or association.
  1. Certification mark. This is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of the origin, mode or manufacture of goods, quality and other characteristics. The certification mark may only be used in accordance with the defined standards.
  1. Defensive mark. This is a trademark applied for by a trademark owner of a well known trademark for goods and or services that are not intended to be used by that owner. The purpose of filing a defensive mark is to reduce the possibility of other traders using the trademark for unrelated goods or services because the use of the trademark by a third party may cause confusion in the market place. For example the owners of Sumsung trademark which is widely known for electronics may register the same mark for other goods or services which may be plastics, beverages among others in order to prevent others from using the mark.
  1. An Associated mark. This is a trademark that is identical to another trademark which is registered or is the subject of an application for registration in the name of the same person in respect of similar goods.

Exclusive Rights to Use Trademark as a Whole

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

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.

      Uganda Trademark search – Why you need the study

      Uganda Trademark search – Why you need the study

      During trademark registration process in Uganda, objections may arise for several causes: similarity with a previous trademark (graphic or phonetic), similarity with a notorious famous, trademark too generic, etc. Trademark Comprehensive Study will help you identify potential obstacles so you can properly evaluate your chances of registration.
      What trademark search should cover

      Trademark Comprehensive Study should include the following sections:

      a) Class Identification: Trademarks are registered in classes; the search report should define the classes for your trademark according the description that you provide the trademark attorney.

      b) Trademark Search: Based on defined Classes, trademark attorney should perform an in depth search of existing registered trademarks, identifying the ones that have graphic/phonetic similarities.


      c) Analysis and Recommendation: Based on the search results, a trademark attorney should offer overall recommendations regarding the trademark registration probabilities.
      Before filing your trademark in Uganda it is important that you evaluate possible obstacles that may arise during registration process. Trademark search will not only list similar trademarks (graphic/phonetic) found in the official Uganda Trademark Database that may conflict with yours, but also give you an Attorney’s opinion about registration possibilities. This trademark search report is optional but highly recommended.

      Conduct a Trademark Search!

      WHY YOU NEED TO CONDUCT A TRADEMARK SEARCH

      An intending applicant for registration of a trademark shall first carry out a search to ascertain whether the trademark exists in the register (section 5). 

      The motive behind initial trademark search is to reduce the number of opposition to trademarks registration proceedings. It is also important to conduct a search prior to launching a new brand/ product into the market. You do not want to be faced with law suits and court injunctions immediately after spending alot of money on the new brand because it is infringement of an existing trademark. Not long ago, Facebook was forced to pull down the business page of houzify.com after complaints of trademark infringement were made by houzz.com. At the time of it being pulled down, the Facebook page of houzify had close to 54000 followers. You don’t get such followers without effort. To get such a following on a new brand, you need to trip the effort that was used in promoting the brand that was pulled down.
      Therefore, a simple trademark search with the relevant trademarks office and online prior to finalizing your trademark registration and launch of the new brand will save a lot in terms of money and time.
      In Uganda, official fees for conducting a trademark search is Ug. Shs. 25,000/= for local companies and USD$65 for international trademarks/ trademarks of foreign companies/ individuals. In addition to searching trademark database of the trademark office, it is advisable to search the internet using google and other search engines to see if there is a remote possibility that any business is using the trademark similar to what you have decided to use.
      All said, prevention is better than cure. It is better to spend considerable amount of time and energy on building the business and brand rather than to spend resources on fighting a case on the trademark infringements suits because you failed to do a simple trademark clearance search. A trademark clearance search should be the corner stone in the foundation for building a strong and long lasting trademark for a business.

      Registration and registration requirements

      Registration of trademarks in Uganda is enabled by the Principal Legislation on trademarks in Uganda the Trademarks Act No.7 of 2010 that repealed the Trademarks Act Cap 217 and Chapter 37 of the Penal Code Act Cap 120; and its regulations, the Trademark Regulations Statutory Instrument No. 58 of 2012.

      There are several types of marks that qualify for registrability. These include trademarks; certification marks; identical or resembling trademarks; associated trademarks; series of trademarks, and defensive trademarks. A trademark is defined under the Act 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. A sign or mark is defined under the Act to include any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral, or any combination of them.
      The Trademarks Act entitles any person who claims to be the owner of a trademark used or proposed to be used to apply for its registration. This may be a natural person or entity. Goods and services are classified in accordance with the third schedule to the Trademark Regulations 2012 that make reference to the 9th Edition of the International Classification of Goods and Services for the purposes of the registration of marks under the Nice Agreement of June 15 1957 (as revised) Published by the World Intellectual Property Organization in 1992, including the explanatory notes and lists of goods and services published therein.

      Registration may be effected in Part A or Part B which have different requirements. In order to have a trademark registered in part A, it must consist the name of the company, individual or firm represented in a particular manner, the signature of the applicant for registration or of some predecessor in business, an invented word or words, a word or words having no direct reference to the character or the quality of the goods or services, and not being according to its ordinary signification, a geographical name of surname. The word must be distinctive and there must be adduced evidence of distinctiveness.

      Distinctiveness means in the case of a trademark relating to goods, adapted in relation to the goods in respect of which the trademark is registered or proposed to be registered, to distinguish goods with which the owner of a trademark is or may be connected, in the course of trade, from goods in the case of which no connection subsists; or in the case of a trademark relating to services, adapted in relation to the services in respect of which the trademark is registered or proposed to be registered, to distinguish services with which the owner of the trade mark is or may be connected in the course of trade, from services with the provision of which he or she is not connected.

      Registration in Part B requires that the trademark shall be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the owner of the trademark is or may be connected in the course of trade from goods in the case where no connection subsists. A trademark relating to services to be registered in Part B must be capable, in relation to services in respect of which it is registered or proposed to be registered, of distinguishing services with the provision of which the owner of the mark is or may be connected in the course of business from services the provision of which he or she is not so connected. An applicant is free to seek the preliminary advice of the registrar on distinctiveness before making an application. Additionally for a trademark to be registered in either Part A or B, it must be capable of graphical representation.

      The law also outlines unregistrable trademarks; the registrar may refuse to accept any application upon which any of the following appear—

      • (a) the words “patent”, “patented”, “by letters patent”, “registered”, “registered trade mark”, “registered design”, “copyright”, “certified”, “guaranteed”, “to counterfeit this is a forgery” or words to like effect; 
      • (b) the words “Red Cross” or “Geneva Cross” and representations of the Geneva and other crosses in red, or of the Swiss federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours; 
      • (c) representations of the armorial ensigns of Uganda or any device so nearly resembling them as to be likely to lead to mistake, or of the national flag, or any words, letters, or devices likely to lead persons to think that the applicant has Government patronage or authorization; and 
      • (d) a representation of armorial bearings, insignia, a decoration or a flag of any state, administration, city, town, place, society, body corporate, institution or person.

      The law also restricts registration of the following marks; trademarks likely to deceive or would be contrary to law, morality or any scandalous design; a trademark consisting of a word commonly used and accepted as a name of a single chemical element or compound; a shape that results from the nature of the goods themselves; the shape of goods that is necessary to obtain a technical result and the shape that gives substantial value to the goods. The law also prohibits registration of trademarks that are identical and resembling trademarks already on the register by a different owner, subject to exceptions.

      Effect of registration
      Registration confers the exclusive right to use the mark and the right to act in case of infringement. A registered owner also acquires a right to assign his or her trademark. Additionally, in all proceedings relating to a registered trademark, the fact that a person is registered as owner of a trademark is prima facie evidence of validity of the original registration of the trademark and of all subsequent assignments and transmissions. A person may not institute proceedings to prevent or recover damages for trade mark infringement unless his trade mark is registered. However an unregistered owner has a right to bring an action for passing off at common law.

      The law does not make registration of trademarks compulsory. Mandatory registration comes into play where an opposition has been made to the registration of a trade mark on grounds of prior registration in the country of origin. The person or entity making the opposition must make an undertaking to register the trademark with in a given period of time and must furnish such undertaking with the registrar of trademarks at the time of filling the opposition that he or she will take all the necessary steps to effect registration of that trademark registered in the country of origin with the registrar of trademarks.

      Term of registration
      Registration of a trademark lasts for a period of seven (7) years from the application filing date. Registration is renewable every ten (10) years upon payment of a prescribed fee.

      Renewal of registration
      Renewal is a pre-condition for the continuation of rights conferred by the original registration. If no fees for renewal are paid with in the prescribed time, the trademark is removed from the register. The law requires renewal to be made at any time before the expiration of the last registration of the trademark.

      Definition of A Trademark

      Definition of trademark


      A trademark is a sign that is used to distinguish the goods and services offered by one undertaking from those of another. The trademark must be able to distinguish goods and services and should not be misleading.

      A trademark may consist of any word, symbol, design, slogan, logo, colour, label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically. A trademark protects goods whereas service mark protects services of the registered user.

      Trademark registration in Uganda is governed by the Trademarks Act, 2010. The Act provides for among other things; the registration of trademarks, the procedure for and duration of registration, the effect of trademark registration and action for infringement of a trademark, the  fees for legal proceedings and appeals and trademark related offences.
        Rights associated with trademark registration in Uganda
        1. Exclusive use of the trademark for goods and services or both upon registration.
        2. Right to stop other people from using the trademark without the permission of the owner.
        3. Trademark provides legal protection from imitators trying to profit from the business identity of a registered user of the trademark.
        4. Trademark is a valuable intellectual property business asset that can be sold or licensed, assigned or transmitted.
        5. The registered user of trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of the trademark.
        Duration of the term of registered trademark
        The duration of trademark upon registration is for a period of seven years and upon expiry is renewed every ten years.