Flexible specifications and convention priority claims now allowed

Since the recent implementation of new software, the Trademarks Registry in Uganda had 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 Nice Classification. As a result, acceptance notices have been issued requiring that specifications that deviate from the wording used in the Nice Classification be changed to reflect the exact wording used in the international class headings - before the application can proceed to advertisement.

Following intense lobbying from practitioners, this requirement has been reviewed and subsequently withdrawn. Applicants are once again permitted to file using either specific wording of their choice or the wording of the international class headings.

The Trademarks Registry has also announced that applications may now be filed claiming priority under the Paris Convention for the Protection of Industrial Property. Although Uganda has been a member of the Paris Convention since 1965, it remains a common law country. This means that an international agreement can become part of the domestic law only if it has been enacted expressly into that national law by an act of Parliament. Neither the Uganda Trademarks Act 2010, nor the former legislation that it replaced, contains provision for international treaties, including the Paris Convention. In a serious dispute, a priority claim allowed by the registrar may not be upheld by the courts. However, as priority claims are clearly being accepted in practice, and provided that their vulnerability is understood, the pragmatic approach would be to claim priority if there is an opportunity to do so.

Finally, while previous legislation in Uganda made no provision for service marks, they have become registrable since the introduction of the Trademarks Act 2010. The Trademarks Registry received the first service mark applications on September 29 2010. To proceed with a service mark application, the usual details of the mark, the applicant and the services to be claimed are required. The Nice Classification is used and a separate application required for each class. Each application must be accompanied by a power of attorney. On filing, applicants are required to search for prior, conflicting registrations.

Acknowledgements to Mac Spence, Spoor & Fisher Jersey, St Helier

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