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Tuesday, 1 March 2016

Registration and registration requirements

Registration of trademarks in Uganda is enabled by the Principal Legislation on trademarks in Uganda the Trademarks Act No.7 of 2010 that repealed the Trademarks Act Cap 217 and Chapter 37 of the Penal Code Act Cap 120; and its regulations, the Trademark Regulations Statutory Instrument No. 58 of 2012.

There are several types of marks that qualify for registrability. These include trademarks; certification marks; identical or resembling trademarks; associated trademarks; series of trademarks, and defensive trademarks. A trademark is defined under the Act 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. A sign or mark is defined under the Act to include any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral, or any combination of them.

The Trademarks Act entitles any person who claims to be the owner of a trademark used or proposed to be used to apply for its registration. This may be a natural person or entity. Goods and services are classified in accordance with the third schedule to the Trademark Regulations 2012 that make reference to the 9th Edition of the International Classification of Goods and Services for the purposes of the registration of marks under the Nice Agreement of June 15 1957 (as revised) Published by the World Intellectual Property Organization in 1992, including the explanatory notes and lists of goods and services published therein.

Registration may be effected in Part A or Part B which have different requirements. In order to have a trademark registered in part A, it must consist the name of the company, individual or firm represented in a particular manner, the signature of the applicant for registration or of some predecessor in business, an invented word or words, a word or words having no direct reference to the character or the quality of the goods or services, and not being according to its ordinary signification, a geographical name of surname. The word must be distinctive and there must be adduced evidence of distinctiveness.

Distinctiveness means in the case of a trademark relating to goods, adapted in relation to the goods in respect of which the trademark is registered or proposed to be registered, to distinguish goods with which the owner of a trademark is or may be connected, in the course of trade, from goods in the case of which no connection subsists; or in the case of a trademark relating to services, adapted in relation to the services in respect of which the trademark is registered or proposed to be registered, to distinguish services with which the owner of the trade mark is or may be connected in the course of trade, from services with the provision of which he or she is not connected.

Registration in Part B requires that the trademark shall be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the owner of the trademark is or may be connected in the course of trade from goods in the case where no connection subsists. A trademark relating to services to be registered in Part B must be capable, in relation to services in respect of which it is registered or proposed to be registered, of distinguishing services with the provision of which the owner of the mark is or may be connected in the course of business from services the provision of which he or she is not so connected. An applicant is free to seek the preliminary advice of the registrar on distinctiveness before making an application. Additionally for a trademark to be registered in either Part A or B, it must be capable of graphical representation.

The law also outlines unregistrable trademarks; the registrar may refuse to accept any application upon which any of the following appear—
  • (a) the words “patent”, “patented”, “by letters patent”, “registered”, “registered trade mark”, “registered design”, “copyright”, “certified”, “guaranteed”, “to counterfeit this is a forgery” or words to like effect; 
  • (b) the words “Red Cross” or “Geneva Cross” and representations of the Geneva and other crosses in red, or of the Swiss federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours; 
  • (c) representations of the armorial ensigns of Uganda or any device so nearly resembling them as to be likely to lead to mistake, or of the national flag, or any words, letters, or devices likely to lead persons to think that the applicant has Government patronage or authorization; and 
  • (d) a representation of armorial bearings, insignia, a decoration or a flag of any state, administration, city, town, place, society, body corporate, institution or person.
The law also restricts registration of the following marks; trademarks likely to deceive or would be contrary to law, morality or any scandalous design; a trademark consisting of a word commonly used and accepted as a name of a single chemical element or compound; a shape that results from the nature of the goods themselves; the shape of goods that is necessary to obtain a technical result and the shape that gives substantial value to the goods. The law also prohibits registration of trademarks that are identical and resembling trademarks already on the register by a different owner, subject to exceptions.

Effect of registration
Registration confers the exclusive right to use the mark and the right to act in case of infringement. A registered owner also acquires a right to assign his or her trademark. Additionally, in all proceedings relating to a registered trademark, the fact that a person is registered as owner of a trademark is prima facie evidence of validity of the original registration of the trademark and of all subsequent assignments and transmissions. A person may not institute proceedings to prevent or recover damages for trade mark infringement unless his trade mark is registered. However an unregistered owner has a right to bring an action for passing off at common law.

The law does not make registration of trademarks compulsory. Mandatory registration comes into play where an opposition has been made to the registration of a trade mark on grounds of prior registration in the country of origin. The person or entity making the opposition must make an undertaking to register the trademark with in a given period of time and must furnish such undertaking with the registrar of trademarks at the time of filling the opposition that he or she will take all the necessary steps to effect registration of that trademark registered in the country of origin with the registrar of trademarks.

Term of registration
Registration of a trademark lasts for a period of seven (7) years from the application filing date. Registration is renewable every ten (10) years upon payment of a prescribed fee.

Renewal of registration
Renewal is a pre-condition for the continuation of rights conferred by the original registration. If no fees for renewal are paid with in the prescribed time, the trademark is removed from the register. The law requires renewal to be made at any time before the expiration of the last registration of the trademark.