Long-awaited Trademarks Bill passed by Parliament

The Ugandan Parliament has passed the long-awaited Trademarks Bill. Although this development has been welcomed by rights owners and IP practitioners alike, it is felt that the bill could have gone further, especially in terms of the protection of trademarks on the Internet.

The key changes due to be implemented by the new law - once it has been approved by the President - are as follows (due to the fact that the numbers of the sections in the bill will change, no reference will be made to them):
  • The new law provides for the maintenance of an electronic register. Until recently, all Trademark Registry records were kept in physical file folders. This hampered the efficient archival and retrieval of records. It is hoped that the modernization of the registry and the implementation of this amendment will reduce delays at the Trademark Registry.
  • Trademark searches will be mandatory. Under the current law, applicants are not obliged to conduct searches. The rationale behind this amendment is that applicants will save on filing fees, as no refund can be given once an applicant has discovered that a conflicting mark already appears on the register. This change may also reduce the number of opposition proceedings.
  • One of the most significant amendments is the possibility to register service marks. The current Trademarks Law provides only for the registration of trademarks for goods. The importance of this amendment, which has been welcomed by the services sector, cannot be over-emphasized. Its most immediate impact will be felt in the advertising, telecommunications, financial services and tourism industries.
  • The requirement to provide security for costs in opposition proceedings is currently a significant problem. Many companies wishing to oppose the registration of trademarks find this requirement unnecessary and cumbersome. Under the new law, companies from East Africa will not be required to pay security for costs before the opposition proceedings can start.
  • Another important amendment is the possibility to licence the use of a registered trademark. The current law provides only for trademark assignments. This has caused significant problems in cases where distributors assumed the role of the trademark owner - even where they were non-exclusive distributors - to prevent others from importing branded products. The new law will make it possible for distributors to issue non-exclusive licences to distribute branded goods and use the registered mark legally.
  • The penalty for criminal trademark infringement will increase from 48 currency points to 120 currency points or five years' imprisonment, or both. The maximum fine will thus increase from approximately $450 to just over $1,200.
  • The new law creates a new type of officer called 'inspectors'. Inspectors will be appointed by the board of the Uganda Registration Services Bureau. Their functions will include entering premises in which suspected infringing goods are kept, as well as inspecting and seizing the goods. This welcome amendment will assist trademark owners in the fight against counterfeiting.
The new law is expected to be approved by the end of 2010.

Paul Asiimwe, Sipi Law Associates, Kampala

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