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Friday, 1 September 2017

DOES UGANDA RECOGNISE AND ENFORCE TRADEMARKS FROM COUNTRY OF ORIGIN?

By Ninsiima Irene and Angualia Daniel
The Paris Convention for Protection of Industrial Property, 1883 is the International Legal Instrument that provides provisions applicable to recognition and enforcement of Trademarks registered in country of Origin. Uganda is a contracting party to the Paris Convention for Protection of Industrial Property, 1883, and its domestic legislation recognises the provisions of the convention above. Uganda’s domestic legislation on recognition and enforcement of trademarks from country of origin is in pari materia with the provisions of the convention above.
The Convention recognises the international law principal of territoriality and states under Article 6 that a trademark duly registered in the country of union shall be regarded as independent of marks registered in other countries of union, including the country of origin. The convention makes it clear that registration of a trademark in the country of origin or any country of union does not of its own take away the right of any other person to register the very mark in any other member country of union. Under Article 6 (1) of the Convention, recognition of a trademark in a country of union is dependent on the domestic legislation of such member country of union where the trademark is sought to be enforced. Thus, registration of a trademark in a country of origin or any other country of union does not per se grant recognition of such trademark in another country of union unless the requirements/ conditions of that country’s domestic legislation, where the trademark is sought to be enforced are met.
The Convention under Article 6 (2) requires a party seeking recognition and enforcement of its trademark in any country of union to make an application for registration of such trademark in the member country of union. This may be done irrespective of whether the same trademark is registered in the country of origin or not.  The application is considered for registration depending on the domestic legislation of the member country where the application is made and its requirements.
Such applications in African States like Uganda, which are members of the Banjul Convention may be done through ARIPO or may be made directly to the trademark registry of the member state where recognition and enforcement is sought. The African Regional Intellectual Property Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among African States on Matters of Intellectual Property has the capacity to hear and determine applications for registration of trademarks in its member states which are parties to the Banjul Protocol on trademarks. Article 2 of the protocol as amended in 2004, provides for persons seeking registration and protection in member states to file an application for registration either directly with ARIPO or with the industrial property office of the contracting state where recognition and enforcement is sought.
Thus, a person seeking recognition and enforcement in Uganda of a mark from country of origin may make an application through the ARIPO secretariat or directly in Uganda with the Intellectual Property Office; the Uganda Registration Services Bureau.
The domestic legislation on trademarks in Uganda is the Trademarks Act 2010. The Act provides the procedure for registration of trademarks. Section 7 (1) provides  that a person who claims to be the owner of a trademark used or proposed to be used by him or her and is desirous of registering it shall apply in writing to the registrar for registration in Part A or Part B of the register. Registration in part A or B of a trademark relating to goods or services confers upon the person registered as owner the exclusive right to the use of the mark in relation to such goods of services. It is only upon registration that a trademark, whether local or from country of origin is given recognition and protection in Uganda. The law expressly states that no action may be brought in respect to an unregistered trademark.
This legal position has been tested in courts and in the landmark case of Kampala Stocks Supermarket Co Ltd V Seven Days International Ltd HCCS NO. 112/2015, the plaintiff applied for and registered various trademarks bearing Chinese symbols and words under part A of the register, which trademarks identify an assortment of goods that the plaintiff trades in. The defendant a Ugandan trader procured goods bearing similar marks from the open market in China, which goods come with their manufacturer’s marks. The plaintiff sued the defendant seeking a permanent injunction to restrain the defendant, its agents or workmen from selling, offering for sale, or dealing in goods bearing the registered trademark of the plaintiff, and for an inquiry into the damages and account for profits, delivery up and destruction of the offending goods and damages.
The plaintiff’s contention was that it registered under part A of the Trademarks Act 2010 as owner and has the exclusive rights to the use of the trademarks. The defendant on the other hand contended that the plaintiff who is also a trader in similar Chinese products registered various trademarks in Uganda relating to goods and services both the plaintiff and defendant procured from an open market without altering the original manufacturer’s trademarks. The defendant further contended that the plaintiff well knowing that the trademarks relate to goods generally traded in, with selfish interest of creating a monopoly, registered these marks in Uganda. The defendant argued that if such registration is not cancelled by court, it would have the implication of preventing manufacturers from China and bonafide traders like the defendant from importing these products into the Ugandan market. The defendant further argued that the plaintiff is not a manufacturer and without the sole distributorship or authorisation from the Chinese owners of the mark cannot lawfully register them in Uganda; and thereafter enjoy exclusive rights that accrue to trademark owners.
The defendant also contended that the plaintiff’s actions were in bad faith intended to eliminate genuine trade competition. The defendant further contended that intellectual property rights should not be used as a tool to stifle genuine trade competition and that such practice would also be against the spirit of The Paris Convention  for the Protection of Industrial Property 1883 and the WTO agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1994, the  International Legal Frameworks  aimed at protection against unfair trade practices in intellectual property which Uganda is signatory to. That countries which are State Parties to the Paris Convention and the WTO TRIPS Agreement of 1994; of which Uganda is one of them; have obligated themselves to prohibit unfair  competition and trade practices (Article 10 of the Paris Convention  and Article 2 of the WTO TRIPS Agreement). The two documents are intended among other objectives to reduce impediments to international trade and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.
Court in its decision restated the law in the The Paris Convention for Protection of Industrial Property, 1883 above and the relevant provisions of the Trademarks Act 2010 above and held as follows;
  • That the plaintiff had lawfully registered the contested trademarks in Uganda in accordance with domestic legislation, in part A of the register which gave him the right to the exclusive use of the marks and to forbid any other person from using similar marks in Uganda in relation to the same goods or services without its authorization or consent.
  • That Uganda recognizes the principal of territoriality as expressed in the spirit of Article 6 of the Paris Convention for Protection of Industrial Property, 1883 that a trademark duly registered in the country of union shall be regarded as independent of marks registered in other countries of union, including the country of origin and as such the existence or registration of similar marks in China did not bar the plaintiff from registering similar marks in Uganda, since the same marks did not exist on the Ugandan register.
  • That the Ugandan domestic law does not forbid the registration of a trademark on the ground that it could be registered elsewhere; however, it accords a right to register by an owner registered in a country of origin.
  • That the law in Uganda offers an opportunity to any person aggrieved by registration of a trademark to make an objection/opposition at the time an application for its registration is made when the application is nationally advertised, and the defendant did not. That when an application for registration of a trademark is made, it has to be published and the law gives any person the right to give notice of opposition/ objection to the registration of the mark sought to be registered and it is published for the public to have an opportunity to object to it.
  • That after the trademark has been registered, the only person who has locus standi to challenge its existence on the register is the registered owner or some other person having a proprietary right in such trademark like a licensee or agent and such a person may bring an application for deregistration under s.45 of the Trademarks Act 2010.
  • That the defendant had no locus standi since it was not the owner of the trademarks and neither did it have any proprietary rights in the marks. That the only person who had locus standi would be the Chinese owners of the trademarks who would have to bring their application for deregistration under s 45 above and within seven years from the date when the plaintiff had such marks registered. A trademark entered in part A of the register is regarded as conclusive as to validity after seven years of being on the register.
In conclusion therefore, recognition and enforcement of a trademark in Uganda, be it local or from country of origin can only arise if;-
  • The owner of the mark gets it registered on the Uganda trademark register either through ARIPO or directly through the Intellectual Property Office, the Uganda Registration Services Bureau.
  • The owner objects to the registration of a similar mark on the register, and undertakes and thereafter registers the mark on the register.
  • The owner applies for deregistration of a given mark on the register that is similar to its mark and registers that mark as owner on the register.