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.
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
