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.

Why You Should Hire A Trademark Attorney

CONSIDERING TRADEMARK REGISTRATION IN UGANDA? THIS IS WHY YOU SHOULD HIRE A TRADEMARK ATTORNEY

Trademark owners who attempt to file and prosecute their own trademark applications work on the believe that by not hiring a trademark attorney, they will save on the attorney fees. From experience, these trademark owners end up spending more money in the process. They make many mistakes in the process and pay trademark attorneys later on to correct the mess. It is understandable that many times, this group of trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non trademark attorneys.

I have attended to many clients that have filed their own trademark applications, and some that have used non-attorney services. These clients are usually up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application, or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them. In over 60% of the cases, I have had to file fresh trademark applications on learning that the non-trademark attorney did not file the right documents or missed a crucial stage in the process that rendered what was done of no effect.

Conduct a Trademark Search!

WHY YOU NEED TO CONDUCT A TRADEMARK SEARCH

An intending applicant for registration of a trademark shall first carry out a search to ascertain whether the trademark exists in the register (section 5). 

The motive behind initial trademark search is to reduce the number of opposition to trademarks registration proceedings. It is also important to conduct a search prior to launching a new brand/ product into the market. You do not want to be faced with law suits and court injunctions immediately after spending alot of money on the new brand because it is infringement of an existing trademark. Not long ago, Facebook was forced to pull down the business page of houzify.com after complaints of trademark infringement were made by houzz.com. At the time of it being pulled down, the Facebook page of houzify had close to 54000 followers. You don’t get such followers without effort. To get such a following on a new brand, you need to trip the effort that was used in promoting the brand that was pulled down.

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.

Trademark registration procedure in Uganda

Trademark registration procedure in Uganda

• 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.
• 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.
• 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.
• 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.

Different types of marks which can be registered in Uganda

Different types of marks which can be registered in Uganda

1. 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.

2. 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.

3. 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.

4. 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.

Definition of A Trademark

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.

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.

Rights associated with trademark registration in Uganda

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.

Uganda Trademark search – Why you need the study

Uganda Trademark search – Why you need the study

During trademark registration process in Uganda, objections may arise for several causes: similarity with a previous trademark (graphic or phonetic), similarity with a notorious famous, trademark too generic, etc. Trademark Comprehensive Study will help you identify potential obstacles so you can properly evaluate your chances of registration.

What trademark search should cover

Trademark Comprehensive Study should include the following sections:

a) Class Identification: Trademarks are registered in classes; the search report should define the classes for your trademark according the description that you provide the trademark attorney.

b) Trademark Search: Based on defined Classes, trademark attorney should perform an in depth search of existing registered trademarks, identifying the ones that have graphic/phonetic similarities.

c) Analysis and Recommendation: Based on the search results, a trademark attorney should offer overall recommendations regarding the trademark registration probabilities.

Before filing your trademark in Uganda it is important that you evaluate possible obstacles that may arise during registration process. Trademark search will not only list similar trademarks (graphic/phonetic) found in the official Uganda Trademark Database that may conflict with yours, but also give you an Attorney's opinion about registration possibilities. This trademark search report is optional but highly recommended.