Kampala Associated Advocates: Trademark Registration Procedures in Uganda

What is a trademark?

A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company from those of other enterprises. A sign or mark includes any word, symbol, slogan, logo, sound, smell, color, brand label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically. The trademark has to be distinctive, non-descriptive and not likely to cause confusion. Trademark registration confers on the owner, the exclusive rights to prevent others from using the same or confusingly similar mark.

Importance of a trademark:

• Registration of a trademark gives the owner an exclusive right to use the registered mark on the goods and/or services for which it is registered.
• The owner of a registered mark can sue for infringement of his registration if someone else uses the same or a similar mark on the same or similar goods and/or services for which the mark is registered.
• Registration gives one’s business the ability to distinguish itself from other providers in the market and prohibits others from capitalizing on an enterprise’s marketing efforts and good will.
• It is a guarantee of the reputation or the renown of the producer or the provider.
• Trademark is a valuable intellectual property business asset that can be sold or licensed, assigned or transmitted.

Different types of marks which can be registered in Uganda:

a) A Service mark. This is a trademark that is used for advertisement of services.
b) A Collective mark. This is a trademark that distinguishes the goods and services of members of a group or association of enterprises from those of any other undertakings.
c) 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.
d) 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.
e) An Associated mark. This is a trademark that is identical to another trademark which is registered or is the subject of an application for registration in the name of the same person in respect of similar goods.

Registration:

A trademark is a right granted upon registration by lodging an application to the registrar of the trademarks who enters it in the trademarks register.

Duration:

A trademark is valid for seven years from the filing date of the application and may be renewed indefinitely for successive ten year periods upon payment of the prescribed renewal fee.

Who may apply for registration?

Any person or corporation who is the owner of a mark used, or proposed to be used, by him in Uganda, may make an application for the registration of a mark in this country.

Applications may be made either by the owners of marks or by agents in the names of and on behalf of the owners. The agent must be an Advocate of the High Court.

Categories of trademark registrations / applications:

1. New Trademark Application
2. Trademark Renewal
3. Trademark Assignment / Mergers
4. Trademark Licensing
5. Change of Name

Rejection:

The Registrar has power to reject registration of trademark where its use would be likely to deceive or would be contrary to law, morality or any scandalous design. The Registrar also cannot register a mark in respect of goods or description of goods that is identical with or nearly resembles a trademark belonging to a different owner and already on the register. Such registration is considered to bring about a likelihood of confusion where goods are the same or of the same description.

ABOUT THE LAW FIRM:

Kampala Associated Advocates (KAA) is a Ugandan full service law firm advising clients on a range of legal matters, from litigation and arbitration, banking and finance, oil and gas, telecommunications, media and technology law to corporate and transactional advisory legal services. We have a total of eleven partners with varied areas of specialization, assisted by over sixteen lawyers and legal Consultants. This makes KAA one of the largest and leading legal practices in Uganda. Our combined legal resources allow the firm to meet all the needs of our clients efficiently and with the utmost attention, whenever our clients need us. KAA is regarded by clients and peers alike, as the largest and best law firm in Uganda.

INTELLECTUAL PROPERTY PRACTICE:

The practice advises a number of local and international clients on intellectual property matters including, but not limited to, registration of trademarks, service marks, copyrights and patents, as well as opposition to the registration of the same trademarks, trade secrets, service marks, copyrights and patents at the Intellectual Property Registry and courts of law.

The digital economy largely driven by advances in technology has further created new frontiers for intellectual property protection, infringement and enforcement. Our team of Trade mark lawyers has been instrumental in helping various clients in protecting their trademarks and reputations online against the threat of cyber and domain squatters and domain name theft. This combined with the traditional intellectual property (trademark and copyright) enforcement strategies; helps deliver decisive results for our clients across all the different methods / platforms for trademark, copyright and patent right infringement.