Jun 03, 2021 (Newsletter Issue 11/21)
Chance to Renew Expired Registrations
On May 25, 2021, the Uganda Registration Services Bureau has given notice via the government publication New Vision that 4,095 expired trademark registrations will be cancelled if they are not renewed on or before June 23, 2021. Some of these registrations expired as far back as 2005.
Source: www.spoor.com
May 20, 2021 (Newsletter Issue 10/21)Trademark Regulations AmendedIn May 2021, the Uganda Registration Services Bureau (URSB) informs that the Trademark Act 2010 and the Trademarks Regulations 2012 have been amended by the Trademarks (Amendment) Regulations 2021.
Main changes are the following:
- Agents must now register as trademark agents on the Registry's website. They must renew their registration every year.
- The applicants' addresses must now include an email address, a telephone number and a postal code.
- Searches must now be requested on an official form (TM 27) and are subject to a fee. Previously, a search could be requested by letter.
- Classification will be in accordance with ‘the current edition’ of the International Classification of Goods and Services (Nice Agreement). Until now there has been a specific reference to the 9th edition of the International Classification.
- Publication of an application will no longer be restricted to the Gazette. Publication can now be made in the Gazette "or in other media as the Registrar may direct".
- There is now a statutory form (TM 42 A) for the application "extension of time". An official fee is payable.
Further Information on the changes can be seen hereSource: www.ursb.go.ug; www.spoor.com Apr 20, 2016 (Newsletter Issue 7/16)New Intellectual Property Law in ForceThe Ugandan Industrial Property Act of 2014 is now in force despite the fact that no Regulations have been passed. The new law does not concern trademarks. It refers to patents, utility models, industrial designs and so-called 'technovations', which are defined as solutions to specific problems in the field of technology.
For more information, please check here
Source: www.spoor.com Apr 05, 2016 (Newsletter Issue 6/16)List of Trademarks Eligible to Be Renewed The Ugandan Trademarks registry has published a list of trademarks eligible to be renewed in 2016-2017. The list of trademarks can be accessed here
Source: JAH & Co. IP, Qatar Apr 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
The principal law governing Trademarks in Uganda is the Trade Marks Act No. 17 of 2010.
Uganda is a party to the Paris Convention for the Protection of Industrial Property 1883. Uganda is also a party to the TRIPS Agreement (Trade Related Aspects of Intellectual Property Rights which is not only the first comprehensive multilateral agreement on intellectual property but also the first international agreement that sets forth minimum standards of protection for several areas of intellectual property.
Uganda is not a member of the Madrid System.
Trademark protection is obtained by registration. Trademarks must therefore be registered locally to be protected.
For the purposes of trademark registration, the goods and services are classified according to the current Nice Classification, 11th edition, version 2022 (NCL 11-2022), in effect as of January 1, 2022, edition of the International Classification of goods and services under the Nice Agreement of 15th June 1957 and to the current edition of the International Classification of Figurative Elements of Marks under the Vienna Agreement of 12th June, 1973.
The classification was incorporated in the Trade Marks Act No. 17 of 2010, the Trademarks Regulations of 2012 (as amended) in the third schedule and the Trademarks (Amendment) Regulations No. 9 of 2021.
Any word, symbol, slogan, logo, sound, smell, colour, brand, label, name, signature, letter, numerical or any combination of them which is capable of distinguishing goods or services and is capable of graphical representation or is distinctive is registrable.
Thus the formal requirements for a trademark to be eligible for registration are;
a) It must be distinctive in order to enable registration under part A and capable of distinguishing goods and services to enable registration under part B.
b) It must not be descriptive.
c) It must relate to particular goods or services.
The following trademark types are registrable; service marks, associated marks, defensive marks, collective mark and certification marks.
A person who intends to apply for the registration of a trademark must first carry out a search to ascertain whether the trademark exists in the register upon payment of a prescribed fee.
A trademark application is then 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. Where the applicant is a foreign company/person, a power of attorney (simply-signed) or Form of Authorization (TM. NO. 1) to an agent, who must be an advocate of High Court and registered with the trademark registry of Uganda Registration Services Bureau as a trademark agent, is required. The filled application is then filed at the Trademarks Registry.
The application is then examined by the Registrar to determine its inherent registrability and conflict with prior existing registrations and or applications. Where the application is accepted by the Registrar of Trademarks, the application is then advertised in the Uganda Gazette for a period of 60 days. If there is no objection after the expiration of 60 days of the advertisement, the Registrar shall upon payment of the prescribed fee by the applicant enter the trademark in the register and issue a certificate of registration.
A separate application is required for each class of goods.
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 is enjoined to give notice in writing to the applicant or his authorized agent at his or her trade or business address of the non-completion. The registration is deemed to be abandoned if it is not completed within 14 days from the date when the notice was sent or after such further time as the Registrar may have allowed.
Foreign applicants need a domestic registration.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The approximate time frame for completing the registration process of a trade mark in Uganda is about four months. The process can be longer when the application for registration is being opposed.
National:
Any person who has any ground of objection may, within 60 days from the date of publication of an application in the Gazette or any other media as directed by the registrar, give notice to the Registrar of the objection to the registration. The notice of objection must be in writing and must state the grounds of objection. The party seeking to oppose registration may apply for extension of time if by the time of such application the registration has not been completed.
The term of a trademark is 7 years from filing date and is renewable every ten years upon payment of the prescribed fee.
The application for renewal can be made at any time not more than three months before the expiration of the last registration of a trademark. After this, the non-payment of the mark is published in the Gazette or any other media as directed by the registrar.
If within six months from the date of expiry of the trademark it is not renewed, a penalty for late renewal shall be paid.
For renewal, it is not necessary to proof use of the trademark.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is USD 150 for each class, in addition to the official search fee of USD 65 per class. The publication fee is not fixed, as it depends on the number of words or the amount of space the advert will take in the Gazette or any other media as the Registrar shall direct but is on average USD 80. Under the Trademarks (Amendment) Regulations No. 9 of 2021, it is now possible to advertise the application in the Intellectual Property Journal published by the trademark registry.
The registration fee is USD 250.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Jul 27, 2022
Angualia Busiku & Co. Advocates, Kampala, Uganda