TRADEMARK REGISTRATION IN UGANDA: THE PROCESS AND REQUIREMENTS

Legal Framework

The principal law regulating trademarks in Uganda is the Trademarks Act Cap 225 and the Trademarks Regulations, 2023. These laws provides for the appointment of the Registrar of Trademarks, registration of trademarks, procedure and duration of registration, effect of registration, action for infringement of trademark, use and non-use of trademarks, fees, legal proceedings, appeals against decisions of Registrar and trademark offences.

Meaning of Trademark: What is Protectable?

A trademark is a sign or mark or a combination of sign or marks capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking. See Section 1 and 4 of the Trademarks Act.

Register of Trademarks

The Registrar of trademark who is designated under the Uganda Registration Service Bureau Act is mandate to maintain in his or her office a manual register or electrical registrar or both. The Register is kept under the control and management of the registrar.

Purpose of Trademark

From the above statutory definition of a trademark, I am inclined to agree with what court stated in the case of Canon Kabishiki Kaisha –V- Metro Goldwyn Meyer (1999) 332 at para 28 that “the essential function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or end user enabling him without the possibility of confusion to distinguish the product or service from others that have another origin”

A trademark does not only protect the business reputation and goods but also to protect consumers from deception that is by preventing the buying public from buying inferior goods or services in the mistaken belief that they originate from or are provided by another trader. See David Bakibinga & Ronald Kakungulu intellectual property law in East Africa at 208 – 209

Why register a trademark

Registration of a trademark gives the owner an exclusive right to use the registered mark on the goods or services for which it is registered. Where there is infringement of trademark registration, the owner of registered trademark can sue for infringement.

Registration of a trademark gives owners business the ability to distinguish itself from other providers in the market and prohibits others from capitalizing on an enterprise’s marketing efforts and good will.

Who can apply for a Trademark?

Any person or corporation who is the owner of a mark used or intended to be used by him in respect of any goods and services in Uganda may apply to the Registrar for trademarks registration. The application may be made by the owner himself or through his lawful agents who must be in possession of a power of attorney.

Registrar’s power to refuse the Application

Upon application for registration of a Trademark, the registrar may refuse or accept the application absolutely or subject to amendments, modifications, conductors or limitations as he or she deems fit. Where the registrar refuses the application or accepts registration on condition he or she shall state in writing the grounds for his or her decision. Any person aggrieved by the decisions of the Registrar may appeal to high court.

Trademark to be registered for particular goods or services

A trademark is only registered in respect of particular goods or classes of goods.

Procedure for Trademark registration in Uganda  

The law requires a person who intends to apply for the registration of Trademark to conduct a search with the registrar of Trademarks to ascertain whether the trademarks exists in the registrars or not.

If accepted, the application is then examined to determine its inherent registrability and conflict with prior existing registrations

If there is no objection, the registrar shall after the expiry of 60 days of publication and upon payment of the prescribed fee enter the trademark in the register and issue a certificate of registration.

Publication of Application

Upon acceptance of an application for registration of trademark, whether absolutely or subject to conditions and limitations, the Registrar of trademarks shall cause the application to be published in the gazette for 60 days.

Objection to registration.

Any person having any ground of objection may upon publication of application give notice to the registrar of objection to the registration. Such notice of objection must be in writing and shall include a statement of grounds of objection.

Upon receipt of the notice of objection, the registrar then sends a copy of the notice to the applicant, who is also required to send to the registrar a counter statement of the grounded on which his or her application for registration of trademark relies. Failure to file a counter statement implies that the applicant has abandoned his or her Application.  

Upon receipt of the counter statement, the Registrar is required to send a copy of the same to the person objecting to the registration and shall cause the matter to be fixed for hearing and the Registrar shall then decide whether registration should be permitted.  Any person aggrieved by the decision of the Registrar may appeal to court.

Duration and renewal of Trademarks

A trademark is valid for 7 years but is renewal every 10 years upon payment of the prescribed fees.

Removal of a trademark from register

A trademark may be removed from the register for non-use.

A trademark can also be removed from the Register for non-renewal of the registration upon expiry.

A trademark may also be removed from the Register upon proof of prior registration in a country of origin.

An application to remove a trademark from the register on proof of prior registration is made to court within 7 years from registration in Ugandan. Court can order removal of a trademark from the register if it is proved to courts satisfaction that the trademark is identical with or nearly resembles a trademark which was prior to registration in Uganda registered in respect of the same goods, the same description of goods or services or description of services which are associated with those goods or goods that description in a country or place from which the services originate.

Infringement of trademark registration

The registration of a person or corporation as the owner of a trademark in respect of goods or services gives to that person exclusive right to use the trademark in relation to those goods or services.

There is infringement of that exclusive right if any person not being the owner of the trademark or a person authorized by the owner for that purpose to use it to indicate the source of goods or services.

Infringement through breach of restriction in instances where there is an agreement between the owner or permitted user of trademark relating to goods or services and a purchaser or owner goods and the latter breaches the agreement.

Remedies for infringement of Trademark

No action for infringement can be sustained in courts of law if the trademark is not registered. Where the trademark is not registered, an action for passing of goods or services is the remedy available.

The law governing trademarks provides a number of remedies to a person whose rights have been infringed or are likely to be infringed and include;

Injunction

A person whose rights are in imminent danger of being infringed may upon instituting civil proceedings apply for and obtain an injunction to prevent the infringement or to prohibit the continuation of infringement.  

Damages

A person who has sustained any damages because of the infringement of his rights may claim damages against the person responsible.

Inspection and removal

The law also allows the right owner to apply by way to apply by way of expert proceedings to court to make an order for inspection and removal of from the infringing persons premises or control of the infringing material

Restrictions on registration of Trademark

The law prohibits registration as a trademark or part thereof any matter the use of which is likely to deceive or would be contrary to law, morality or any scandalous design.

Registration of trademark by more than one owner

The law permits the registration of more than one owner in a case of honest concurrent use or other special circumstances in respect of the same goods and services, the same description of goods or services, goods and services or description of goods and services which are associated with each other or trademarks that are identical or nearly resemble each other. The registration of such trademarks is subject to the conditions and limitations as the Registrar or Court may impose.

Registration of associated and series of trademarks

Where a trademark relating to goods registered or a trademark which is the subject of an application for registration, in respect of any goods is identical with another trademark that is registered or is the subject of an application for registration, in the name of the same owner in respect of the same goods or description of goods or services that are associated with those goods or goods of that description or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other that the owner, the Registrar may require that the trademarks be entered on the register as associated trademarks. 

Fees for trademark registration

The fees payable for trademark registration varies depending on whether the trademark is local or foreign, whether there is objection or not and whether the prospective applicant will involve a lawyer or not. For professional fees, at Emet Advocates, our professional fees are reasonable and we endeavor to have a payment plan that is favorable to our clients.

Contributor:

Kasingye Stuart is a Partner at Emet Advocates,

Stuart is an Intellectual Property Lawyer specializing in trademarks

Tel: +256785348742, +256200946889

Email: skasingye@gmail.com