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.

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.

      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.

      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.

      Conduct a Trademark Search!

      WHY YOU NEED TO CONDUCT A TRADEMARK SEARCH
      trademarks 1 - Conduct a Trademark Search! - Angualia Busiku & Co. Advocates

      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

      Trademark Registrations - Registration and registration requirements - Angualia Busiku & Co. Advocates

      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.