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Monday, 29 February 2016

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