In Uganda, the Trademarks Act, 2010, governs and deals with the mechanism of Trademark Registration. Among several other things, the Act provides for the registration of trademarks, the procedure of trademark registration, the term of registration, the effect of registration, the actions taken in issues of Trademark Infringement, the required fees for initiating legal proceedings and appeals, and trademark-related offenses.
Various types of marks qualify for trademark registration in Uganda, including identical or resembling marks, certification marks, associated trademarks, defensive trademarks, and series of trademarks. Under the Trademarks Act, 2010, a trademark refers to any sign, mark, or combination of signs or marks, which can be represented graphically and is capable of distinguishing the goods or services of one undertaking from those of others. As per the Act, a sign or mark may include any symbol, word, logo, slogan, color, smell, sound, name, brand label, numeral, letter, signature, or any combination of these elements.
The Act entitles any person, either a natural person or an entity, who claims to be the trademark owner of a mark used or proposed to be used to go ahead with its trademark registration. In Uganda, goods and services are classified following the third schedule to the Trademark Regulations 2012, which, for trademark registration, refers to the 9th edition of the International Classification of Goods and Services under the Nice Agreement of 15th June 1957 (as revised).
In Uganda, trademark registration may be accomplished in Part A or Part B, both of which have a different set of requirements. For having a trademark registered in Part A, the proposed mark must include the name of the company (a firm or an individual represented in particular) the signature of the trademark applicant or some predecessor in business, the invented word or words (word or words, which have no direct reference to the quality of services or goods). To be specific, the word or set of words must be distinctive in all aspects.
Registration in Part B requires the trademarks to be capable of distinguishing the goods or services of one trademark owner (be it an individual or a company) from those of others. Before filing a Trademark Application, an applicant is free to seek the preliminary advice of the registrar on distinctiveness. Irrespective of whether a trademark is registered in Part A or Part B, it must be capable of being represented graphically.
In Uganda, the Trademarks Act, 2010, prohibits registration of the following marks:
- Trademarks, which are likely to deceive or would be contrary to morality, law, or any scandalous design
- Trademark focusing on a word, which is commonly used and accepted as a name of a single chemical element or compound
- Trademarks consisting of a shape, which results from the nature of the goods themselves
- Trademarks, which are identical or resemble an already existing registered trademark
TRADEMARK REGISTRATION PROCEDURE IN UGANDA
- The trademark applicant begins by performing a Trademark Search in the trademark registry to discover whether the proposed trademark already exists or not, and if not, then whether it is suitable (not offensive) or not.
- The trademark applicant may seek advice from the registrar corresponding to whether the proposed trademark is capable of distinguishing well the goods and services of the applicant (be it a natural person or an entity) from those of others.
- This step focuses on filing the trademark application for registration upon payment of the required fees. The trademark application must include the proposed trademark, the class of goods or services, and the name, signature, and address of the trademark applicant. If in case the trademark applicant is a foreign company, a POA or form of authorization to an advocate of Uganda’s High Court will be sufficient.
- Now comes the examination phase of the trademark application filed. The registrar shall determine whether the proposed trademark is registrable or not and whether it conflicts with any of the already existing registered trademarks or applications for trademark registration or not.
- If the registrar accepts the trademark application, then the same shall be published in the official government gazette for sixty (60) days.
- If no opposition proceedings are initiated against the proposed trademark after the expiration of 60 days of publication, the registrar, upon payment of the necessary registration fees, shall issue the certificate of trademark registration to the applicant (now the trademark owner).
RIGHTS ASSOCIATED WITH TRADEMARK REGISTRATION IN UGANDA
- Exclusive use of the trademark for goods, services, or both upon successful trademark registration.
- Exclusive right to restrict or stop other people or companies from using the registered trademark without seeking the permission of the trademark owner.
- A registered trademark provides legal protection from the imitators in the market who try to make profits from the business identity of the trademark owner.
- The owner of a registered trademark may initiate legal proceedings against the instances of trademark infringement to prevent the unauthorized use of the trademark.
- A registered trademark is a valuable IP asset for the owners as it can also be sold, licensed, or assigned.
TERM OF TRADEMARK REGISTRATION IN UGANDA
Trademark registration in Uganda lasts for seven (07) years from the date of application, which can be further renewed indefinitely for periods of ten (10) years upon payment of a prescribed fee.