New Trademarks Bill published
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Following a protracted review process spanning over five years, the government of Uganda has gazetted the Trademarks Bill 2008. According to the memorandum of the bill, the new law is expected to meet the demands of "present day policies, international obligations, globalization and technological developments". The current law is perceived as an impediment to investment due to the inadequate protection afforded to trademarks.
The main features of the bill are as follows:
- The definition section has been amended to allow the registration of service marks. A 'trademark' is now defined as "a sign or mark, or a combination of signs or marks, capable of being represented graphically and of distinguishing the goods and services of one undertaking from those of another undertaking".
- The bill contains more extensive provisions on the registration of certification marks in comparison with the existing Trademarks Act. In particular, the bill provides that certification marks will apply only to goods, and not services.
- The period of protection remains unchanged (ie, seven years). However, for unknown reasons, the renewal period has been reduced from 14 years (see Section 22 of the act) to 10 years.
- Sections 45 and 46 of the bill recognize the priority rights of marks that have been registered in other countries based on reciprocal treatment.
- Under the bill, the courts may, among other things:
- issue an injunction;
- prohibit the import of counterfeit goods bearing a registered trademark;
- prohibit the export of counterfeit goods bearing a registered trademark;
- award damages or accounts for profits; and
- cancel a trademark registration.
- Under the bill, applicants in opposition or cancellation proceedings who reside outside East Africa (Burundi, Kenya, Rwanda, Tanzania and Uganda) must provide security for costs.
- The new bill includes the trademark offences established by the Penal Code Act. More importantly, the following will constitute an offence under the bill:
- falsifying registered trademarks;
- applying for the registration of a trademark in bad faith; and
- manufacturing and possessing equipment used to commit an offence.
- In case of infringement, the bill introduces fines of up to 48 currency points (NUSh 960,000 or approximately $500) and/or a prison term of two years.
While the new penalties may act as a deterrent to some extent, it is unlikely to dent the enthusiasm of counterfeiters. Arguably, the bill must reduce the discretion of the courts with regard to sentencing and increase the amount of the monetary fines. This will represent a more realistic deterrent and discourage the import of counterfeit medicines, which pose an unprecedented health threat in Uganda and the East African region at large.
The bill is to be presented before Parliament in the near future.
Paul Asiimwe, Sipi Law Associates, Kampala
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