Trademark registration procedures in Uganda
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.
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.
Different types of marks which can be registered in Uganda
a) 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.
b) 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.
c) 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.
d) 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.
e) 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.
Rights associated with trademark registration
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.
Trademark registration procedure in Uganda
a) 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.
b) 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.
c) 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.
d) 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.
e) Publication of Application. If the application is accepted by the registrar, the application will be advertised in the official government gazette for 60 days.
f) 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
a) 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.
b) 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.
c) 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.
ABOUT THE AUTHOR: Angualia Daniel (LLM) is a Ugandan lawyer. He is a Partner in the firm of Angualia Busiku & Co. Advocates, Kampala Uganda, East Africa. Email: angualia@lawyers-uganda.com