04-04-2011 (Newsletter Issue 6/11)
Goods & Services Specification Changed
The Trade Marks Registry in Uganda permits now for trademark application to use either the international class headings or the applicants choice of wording.
Before, the Registry insisted that specifications of goods and services be worded exactly in accordance with the class headings as set out in the 9th Edition of the International (Nice) Classification.
Source: Spoor & Fisher, South Africa
Legal basis is the Trademarks Act No. 17 of 2010, in force since September 3rd, 2010.
Trademark protection is obtained by registration. Uganda is NOT a signatory to the Madrid Agreement or the Madrid Protocol. Trademarks must therefore be registered locally to be protected.
Nice classification, 9th edtion
Registrable as a trademark are all distinctive and graphically representable signs, three-dimensional forms, sound marks and any combination of the mentioned signs. Trademarks consisting of a device or devices are also registrable.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Trademarks Registry, Intellectual Property Department in the Uganda Registration Services Bureau.
A separate application is required for each class.
An application can include goods any number of classes, but with additional charges for each additional class.
Foreign applicants need a local agent.
A power of attorney – simply signed - is necessary. Where registration of a trademark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the registrar may, after giving notice of the non completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
Foreign applicants need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Trademark applications accepted by the Registrar are published in the official gazette prior to registration.
The approximate time frame for completing the registration process of a trademark is about 6 months.
The opposition period is 60 days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
The term of a trademark is 7 years from filing date. It can be renewed further after every 14 years. The application for renewal has to be made within six months from the date of expiry of the trademark or else a penalty for late renewal shall be paid. For renewal, it is not necessary to proof use of the trademark.
From the publication of the non-payment, there is 1 additional month to deliver the renewal fee.
A registered trade mark should be used in order to prevent its removal from the Register. Any registered trade mark may be removed from the Register on request of any aggrieved person, if it is proved that on application there was no bona fide intention of use of the mark and that the mark is not actually used, or that there has been no bona fide use of the mark for five consecutive years up to one month before the filing of the request for removal, unless it is proved that the non-use is due to special circumstances in the trade. Permitted use by a registered user is deemed use by the registered proprietor of the mark.
For foreign applicants, the official application fee is USD 100.00 (approx. EUR 70.00) for one class. Publication Fee is USD 150.00 (approx. EUR 105.00). Registration fee is USD 250.00 (approx. EUR 180.00).
For Ugandan applicants, application is UGX 50,000, publication is UGX 380,000 and registration is UGX 100,000.
Trademark Licence Agreement
A licence agreement has to be granted in writing. Licensing of unregistered marks is permitted, if it fulfils certain conditions provided for in the Trademarks Act 2010. A proprietor may restrict a licence to some of the goods or services in respect of which the mark is registered. While the Trademarks Act has no specific provisions in this regard, the sale of a registered mark does not automatically terminate the licence. The law of contract applies in this regard and the general position is that rights granted in the agreement are presumed assignable unless provided otherwise. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licensee with the Trademark Office. The Trademarks Act provides that all assignments and transmissions must be registered. The absence of registration of such agreements could adversely affect the evidential value of the document in question. There is no time frame for a recordal and no prescribed form or content for a licence agreement. The Act requires the owner of the trademark and the proposed registered user to furnish a statutory declaration by the owner describing the particulars of the relationship and stating the relevant goods and services.
A licence becomes enforceable against third parties only upon registration in terms of the Trade-marks Act since the title is deemed to be transferred/conferred only in this event. Publication is not required.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. A registered user may call upon the trademark owner to institute infringement proceedings. If the owner refuses or neglects to do so, the registered user can institute proceedings in his own name, but there is no specific period of time after which he is entitled to do so. The user must cite the proprietor as co-defendant in any such proceedings. It is important for the user to explain the derivation of his title and locus standi when instituting proceedings.
The remittance of royalties abroad shall be subject to existing currency regulations.
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We would like to thank the following law firms for their assistance in updating the information provided:
Sebalu & Lule Advocates, Kampala, Uganda
Frank, Jack & Associates, Kampala, Uganda
Sebalu & Lule Advocates, Kampala, Uganda