Opposition to Trademark Registration

OPPOSITION TO THE REGISTRATION OF A TRADEMARK IN UGANDA

KEY ELEMENTS
  • Who can make an opposition?
  • Grounds for opposition.
  • Protection of trademarks registered in country of origin.
  • Opposition procedure and forum.
  •  Key documents required.
  • Role of trademark agents.
  • Fees involved.

Who has standing to make opposition?

Opposition may be made by any person claiming prior rights to exclusive use of the mark or any other interested person that has sufficient grounds.

Grounds for opposition
There are several grounds that a person making an opposition may rely on. First, Opposition may be made against registration of a trademark under s. 12 on ground that the trademark is similar or nearly resembles the trademark already registered and is therefore likely to deceive or confuse consumers; secondly, opposition may be brought under the provisions of s. 44 on grounds of prior registration in the country of origin. A person may also rely on such grounds as, prior application; prior use; mark not being distinctive; mark being deceptive; mark being generic. A person may also rely on any other ground of unregistrability, i.e. the mark not protectable in a court of law.
Opposition procedure and forum
Opposition procedure is found under s. 12, 44 and 45 of the Trademarks Act 2010 and Regulation 28 and 29 of the Trademark Regulations SI NO 58/2012. Opposition commences by the person giving notice of opposition to the registrar of trademarks in Form TM 6 opposing the registration.  

This notice of opposition must be made within 60 days from the date of publication of the application in the gazette. The notice must contain the particulars of the application namely; the applicant, the application number, the person opposing and their address, the date of advertisement of the application. The notice must also specify the grounds upon which the opposition is based with supporting documentary or any other evidence.  Where registration is opposed on grounds that the mark resembles a mark(s) already registered, the numbers of the registered mark(s) and the number of the mark(s) advertised in the gazette must be set out in the notice. It must then be signed by the person making the opposition or their Attorney/ advocate. The notice is required to be in duplicate.
The registrar thereafter serves a copy of the opposition on the applicant who is required to respond within forty two days by way of a counterstatement in form TM7 setting out the ground upon which the applicant relies as supporting the application for registration of the trademark.

Where a party giving notice of opposition or an applicant sending a counterstatement after receipt of a copy of the notice, neither resides nor carries on business in Uganda, the registrar may require him or her to give security, in such form as the registrar may deem sufficient, for the costs of the proceedings before the registrar, for such amount as the registrar thinks fit, and at any stage in the opposition proceedings, may require further security to be given at any time before giving his or her decision in the case.
The opposition is heard before the registrar.
Protection of trademarks registered in country of origin
The law in Uganda affords legal protection to trademarks registered in the country of origin. Where a trademark is registered in respect to goods or services in a country in which the goods or services originate, the registered owner in the country of origin may object to the registration of the trademark in Uganda by a different applicant that is neither its agent or dealer or user of its products. The opposition is filed with the registrar of trademarks in the form TM6 stating several grounds upon which the opposition is based.
S.12 and s.44 empower the registrar to refuse to register such a trademark if it is proved to his satisfaction by the person making the opposition to registration that the mark is identical or nearly resembles a trademark which is already registered in respect of the same goods or services in a country or place from which the goods originate. The person opposing the registration is required to furnish an undertaking to the satisfaction of the registrar that he or she will apply for registration in Uganda of the trademark registered in the country or place of origin with in three months from the date of giving the notice of opposition and will take all necessary steps to complete the registration.
However, the protection given by the law under s. 44 in respect of a trademark in relation to goods and services originating from a country other than Uganda is only accorded if the country of origin of the goods or services accords to goods and services originating from Uganda the same treatment for example; a country which accords similar treatment to Ugandan goods there by virtue of reciprocity between Uganda and that country where both are member states and signatories to the Paris Convention on the Protection of Industrial Properties 1883.
The applicant may file a counterstatement to the opposition supporting his application and the registrar will go ahead to register the trademark if the applicant proves in his counterstatement that he or she or his or her predecessors in business have continuously used the trademark in Uganda in respect to the same goods or services of which he or she has made an application from a date before the date of registration of the other mark in the country or place of origin.
Key documents required on the part of the person making opposition
ü  Notice of opposition of registration of a trademark in form TM6
ü  A statutory declaration stating the grounds of opposition.
ü  A copy of the gazette notice.
ü  If the opponent is an entity, evidence of registration for example a certificate of incorporation.
ü  Evidence of prior registration of the mark, or prior application or use.
ü  A representation of the mark.
ü  An undertaking to effect registration of the trademark in Uganda by an owner of a mark registered in country of origin (where applicable)
Key documents required on the part of the applicant making a counterstatement
ü  A counterstatement in form TM7.
ü  A statutory declaration setting out the grounds upon which the application for registration of the trademark is based.
ü  If the applicant is an entity, evidence of registration for example a certificate of incorporation.
Role of trademark agents
The law recognizes trademark agents in Uganda. S. 93 of the Trademarks Act authorizes agents so appointed to act on behalf of their principals in any act in connection with a trademark or proposed trademark or a procedure in connection with a trademark. Regulation 2 of the Trademark Regulations indicates that a trademark agent must be an advocate of the High Court of Uganda. Regulation 10 of the Trademarks Regulations confers powers upon trademark agents to act on behalf of their principals. It details that an application, request, or notice which is required or permitted by the Act or Regulations to be made or given to the registrar or court may be signed, made or given by or through a trademarks agent. All other communications between an applicant, a person making a request or giving a notice and the registrar or the court may also be signed, made or given by or through an agent.
Appointment of a trademarks agent is made by signing and sending to the registrar or the court an authority to that effect in the form TM1 or in any other such form the registrar or court may consider sufficient. Once an agent is appointed, service of any document relating to the proceedings is taken to be service upon the person who appointed the agent and any communication directed to be made to that person may be addressed to the agent. Attendances before court or the registrar may also be made through the agent though the registrar reserves powers to require the personal signature or attendance of; the applicant, opponent, proprietor, registered user or any other person.
Fees involved
Fees include professional, government and court fees. Professional fees vary depending on how a particular advocate bills for providing their services. With respect to government and court fees, the first schedule to the trademarks regulations lists the fees.
Item
Matter of proceeding before the registrar
Foreign applicants
     US$
National Applicants
          Shs
1
Notice of opposition before the registrar under s. 12 for each application opposed by the opponent
250
100, 000
2
On lodging a counterstatement in answer to notice of opposition
150
50, 000
3
On hearing an opposition  before the registrar
250
100, 000
4
On notice of opposition before the court for each application opposed by the opponent
250
100, 000
5
On hearing each opposition before the court
250
100, 000
BY NINSIIMA IRENE
m/s angualia busiku & co. advocates
email: ninsiima@lawyers-uganda.com

Application documents required

Application:

required-documentsAn application is filed with the Uganda Registration Services Bureau (URSB), headed by the Registrar General and operating under the supervision of the Ministry of Justice and Constitutional Affairs.

The following information and documents are required:

  • Full particulars of the applicant
  • Power of attorney (simply signed), to be submitted with the application
  • List of the goods or services for which registration is sought
  • The trademark, with a print of the mark if it is not a standard word mark.

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Trademark Protection In Uganda

Trade mark protection:

Provision 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 divided into two Parts, Part A for trademarks which are distinctive, and Part B for trademarks which are capable of distinguishing.
Protection of well-known marks:
Although no express provision is made for the protection of well-known marks, the Act does provide for a trade mark registration to be removed on the ground that an identical or similar trade mark was, prior to the registration in Uganda, registered in respect of the same or similar goods or services in another country from which the goods or services originate. The application for the removal of the Uganda trade mark must be made within seven years of its registration.
Types of trademarks:
The Act provides for the registration of the following marks:
·          trade marks for goods and services
·          certification trade marks
·          defensive trade marks
·          series of trade marks.
Definition of a mark:
Word and device marks (any sign, mark or combination of signs or marks) are allowed. A sign or mark is defined to include any word, symbol, slogan, logo, sound, smell, colour, brand, label, name, signature, letter, numeral, or any combination of them.
Definition of a trade mark:
A trade mark is defined 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.
Definition of a certification trade mark:
A mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by a person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic, from goods not certified, will be registrable as a certification mark in Part A or Part B of the register. A certification mark in respect of services is registrable in Part A of the register.
Registration of a series of marks:
Where a person claims to be the owner of several trade marks in respect of the same goods or services, and the trade marks resemble each other but differ in regard to statements of the goods or services, or statements of number, price, quality or place names or in regard to other non-distinctive matter, or as regards colour, the trade marks may be registered as a series in one registration.
Classification:
While neither the Act nor the Rules specifically refer to classification, the International Classification of Goods and Services (Nice Classification) is applied. The goods (which correspond with the class headings of the Nice Classification) are set out in a schedule to the Rules. A single application may cover only one class.

Application process, and documents required in Trademark Registration

Application:

An application is filed with the Uganda Registration Services Bureau (URSB), headed by the Registrar General and operating under the supervision of the Ministry of Justice and Constitutional Affairs.

The following information and documents are required:
  • Full particulars of the applicant
  • Power of attorney (simply signed), to be submitted with the application
  • List of the goods or services for which registration is sought
  • The trademark, with a print of the mark if it is not a standard word mark.
Examination/procedure:
An application is examined as to formal and substantive requirements. If the application is accepted either with or without conditions, the application is published in the Gazette. If no opposition is filed within a period of 60 days, the registration certificate will be issued.
Opposition:
The Act makes provision for opposition within 60 days from publication of the acceptance. The opposition must be made in writing in the prescribed manner, and set out the grounds of opposition.
The copy of the opposition must be sent to the applicant, who must respond by lodging a counter-statement in the prescribed manner, setting out the grounds on which he relies for his application. If he does not send a counter-statement, he will be deemed to have abandoned his application. The Rules make provision for further evidence to be lodged.
After all evidence has been lodged, the Registrar will hear argument from both parties and thereafter make a decision as to whether registration will be permitted. Any party may appeal to the court against this decision.
Duration and renewal:
A trade mark registration is effective for an initial period of seven years from the filing date of the application, and is thereafter renewable for consecutive periods of 10 years. Renewal must take place within the three months before, or within one month after, expiry of the preceding term. If the renewal fee is not paid within a month after expiry, the mark will be removed from the register. It may, however, be restored upon application in the prescribed form and upon payment of a renewal and restoration fee.
Use requirement and cancellation:
A registered trade mark is vulnerable to cancellation if it has not been used for a continuous period of three years.
Rights conferred by registration:
The registration of a trade mark in Part A of the register gives the owner the exclusive right to the use of the trade mark in relation to the relevant goods or services. The owner also gets the right to institute court proceedings against any person who infringes this exclusive right.
The registration of a trade mark in Part B of the register gives the owner similar exclusive rights, except that the owner will not be entitled to an injunction (interdict) in certain circumstances.

The Common Law Rights: In Trademark Registration

Common law rights:

From an enforcement perspective, Uganda is a former British Colony and, as such, it recognizes that a person who has acquired a reputation in a mark in relation to goods or services may prevent others from misrepresenting that they are associated with the proprietor in a manner that is likely to cause confusion and deception and damage to the person with a reputation.

This right is expressly recognized by the Trade Marks Act which states that nothing in the Act shall be taken to affect a 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.
Marking of goods:
The marking of goods is optional.
Patents
Law:
·                      Patents Act, Chapter 216 of 1993
·                      Patents (Amendment) Act of 2002
·                      Patent Regulations, 1993
Patent protection:
Patent protection is available via a national filing or via an ARIPO application designating Uganda. Uganda has implemented the Harare Protocol (which regulates patent filings in ARIPO) in its national law, thereby giving valid patent protection to applicants seeking to obtain a patent via an ARIPO application.
Uganda has also implemented in its national law, by way of the Patents (Amendment) Act, 2002 the necessary provisions to recognise international applications under the PCT and designating Uganda, and to deal with national phase PCT applications in Uganda. Therefore, Uganda can be designated in PCT international applications, and PCT national phase applications can be filed and processed in Uganda.
Patentable subject matter:
Inventions are patentable if they are new, involve an inventive step and are industrially applicable. An invention is new if it is not anticipated by prior art.
The following, even if they are inventions, are not patentable:
·         discoveries and scientific and mathematical theories
·         plant  or animal varieties or essentially biological processes for the production of plants or animals, other than biological (sic; microbiological intended) processes and the products of such processes
·         schemes, rules or methods for doing business, performing purely mental acts or playing games
·         methods for treatment of the human or animal body by surgery or therapy as well as diagnostic methods (this restriction shall not apply to products for use in any of these methods)
·         mere presentation of information.
·         Types of applications:
·         Application for a patent may be made by way of –
·         a non-convention application, where the effective date is the filing date of the application
·         a convention application, where the effective date would be the priority date of the first-filed application under the Paris Convention
·         a national phase application based on an international application under the PCT in which Uganda is designated
·         an ARIPO application designating Uganda
·         a divisional application, where the original application covers more than one invention
·         a utility certificate application, which (before refusal or grant) may be converted to a patent application.
Application:
Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents. Applications in terms of the Harare Protocol (ie ARIPO applications) can either be filed via the Uganda patent office, in which case they must be transmitted to the ARIPO office for processing. Alternatively, they can be filed at the ARIPO office in Harare. For more information on ARIPO, please refer to the chapter on ARIPO. Foreign applicants must have a local address for service.
Filing requirements:
·         full particulars of the applicant
·         power of attorney (simply signed)
·         assignment from the inventor, or a statement by the applicant justifying his right to the invention (simply signed)
·         specification (including claims, drawings and abstract), in English
·         certified copy of the priority document (if applicable).
Failure to file the priority document within three months from the filing date will lead to the loss of the priority claim.
Novelty:
Absolute novelty is required. An invention is new if it is not anticipated by prior art. Prior art is considered to include everything made available to the public anywhere in the world, by means of written disclosure, including drawings and illustrations, or by oral disclosure, use, exhibition or non-written means.
Convention priority:
An applicant who has filed a patent application in a convention country is entitled to claim priority from such earlier application, provided the application in Uganda is filed within 12 months from the earlier application.
Examination/procedure:
A Uganda application is subjected to formal examination, which takes place automatically. The Registrar may request the applicant to furnish details of corresponding applications in other countries, and may further request that copies of the search report, granted patent, final rejection, etc be furnished.  The Registrar may direct that substantive examination be conducted for particular applications according to the technical field of the invention. In that case, examination is carried out at the ARIPO Patent Office on behalf of the Uganda Registrar.
Duration and maintenance:
A patent has an initial term of 15 years, but may be extended by a further five year period on payment of renewal fees and proof that the invention is being worked in Uganda
Maintenance fees are calculated from the first anniversary of the filing date but become payable upon grant of a patent. Thereafter maintenance fees are due upon the anniversary of the filing date. A six months grace period is provided for payment of renewal fees, subject to payment of surcharges. If a renewal fee is not paid within this period, the patent lapses.
Amendments:
Amendments can be made prior to or even after grant, but any amendment may not go beyond the disclosure of the invention in the application as filed. 
Marking:
No requirement.
Working:
A compulsory licence may be granted in cases of non-working.
Utility model patents:
The Act provides for the granting of utility certificates in respect of inventions which are new and industrially applicable. It is not necessary for the inventions to involve an inventive step. A utility certificate expires, without a possibility of renewal, at the end of the seventh year after the date of filing.
At any time before the grant or refusal of a utility certificate, the application may be converted to a patent application. A patent application may likewise be converted to an application for a utility certificate.
Designs
Law:
·         United Kingdom Designs (Protection) Act, Chapter 218 of 1937
Design protection:
A United Kingdom design extends automatically to Uganda. Design protection is also available via an ARIPO application designating Uganda. However, Uganda has not implemented the Harare Protocol as far as industrial designs are concerned. Accordingly, it is not clear whether the rights derived from a design registered through ARIPO will be enforceable in Uganda.    
Registrable subject matter:
Designs as protectable in the UK.
Types of applications:
Design protection in Uganda can be obtained by:
·         a UK design registration which extends automatically to Uganda
·         an ARIPO application for the registration of a design, designating Uganda.
Application:
United Kingdom registered designs automatically extend to Uganda. As indicated above, application through ARIPO may also be possible inasmuch as Uganda has acceded to the Harare Protocol of ARIPO.
Duration and maintenance:
The UK design registration is effective in Uganda for as long as it endures in the UK. The duration of a design registration via ARIPO is 10 years (see the section on Design protection above).

International/regional conventions Uganda Is a member of

Uganda

Uganda is an independent Republic within the British Commonwealth situated in East Africa. It is a landlocked state bordered by Sudan in the north; Democratic Republic of Congo in the west; Rwanda and Tanzania in the south and Kenya in the east.


International/regional conventions:
Uganda is a member of the following international/regional intellectual property related agreements:
·         Banjul Protocol (of ARIPO) (since 2000)
·         Harare Protocol (of ARIPO) (since 1984)
·         Lusaka Agreement (ARIPO) (since 1978)
·         Nairobi Treaty on Olympic Symbols (since 1983)
·         Paris Convention (since 1965)
·         Patent Cooperation Treaty (since 1995)
·         WIPO Convention (since 1973)
·         WTO/TRIPS (since 1995)

IP legislation:
Trade marks
·         Trade Marks Act no 17 of 2010
·         Trade Marks Rules (issued under the repealed Trade Marks Act, Chapter 217 of 1953 and expressly retained in force)
·         Trade Marks Act, Chapter 217 of 1953 (repealed by the 2010 Act)

Patents
·         Patents Act, Chapter 216 of 1993
·         Patents (Amendment) Act of 2002
·         Patent Regulations, 1993

Designs
·         United Kingdom Designs (Protection) Act, Chapter 218 of 1937

Copyright
·         Copyright and Neighbouring Rights Act of 2006
·         Copyright Act, Chapter 215 of 1964 (repealed by the 2006 Act)

Trade Marks
Law:
·         Trade Marks Act no 17 of 2010
·         Trade Marks Rules (issued under the repealed Trade Marks Act, Chapter 217 of 1953 and expressly retained in force)
·         Trade Marks Act, Chapter 217 of 1953 (repealed by the 2010 Act)