17 Mar
2020

Trademark procedures and strategies: Uganda

Apio, Byabazaire, Musanase and Company Advocates

Legal framework

Uganda applies both local and international laws and treaties to trademark-related matters.

National laws

National laws applicable to trademarks include the following:

  • the Constitution of the Republic of Uganda 1995 (as amended);
  • the Trademarks Act 2010;
  • the Geographical Indications Act 2013;
  • the Copyright and Neighbouring Rights Act 2006;
  • the Uganda National Bureau of Standards Act, Cap 327; and
  • the National Intellectual Property Policy 2019.

International laws and treaties

International laws and treaties applicable to trademarks include the following:

  • the Nairobi Treaty on the Protection of the Olympic Symbol (21 October 1983);
  • the Convention Establishing the WIPO (18 October 1973);
  • the Paris Convention for the Protection of Industrial Property (14 June 1965);
  • the Agreement on Trade-Related Aspect of Intellectual Property Rights (January 1995);
  • the Banjul Protocol on Marks Within the Framework of the African Regional Industrial Property Organisation (ARIPO) (21 November 2000);
  • the Harare Protocol on Patents and Industrial Designs Within the Framework of the ARIPO (25 April 1984);
  • the Lusaka Agreement on the Creation of the ARIPO (8 August 1978); and
  • the Nice Agreement on International Classification of Goods and Services 1957 (Uganda is not a party to this agreement, however, it has adopted use of Nice Classification).

Unregistered marks

Uganda does not allow owners of unregistered trademarks to institute proceedings for the prevention or recovery of damages. However, the Trademarks Act offers protection to unregistered trademarks in Uganda where they are registered in a country or place from which the goods or services originate. The Trademarks Act provides that a trademark owner whose goods or services are registered in their home country or country of origin, may object or oppose the registration of a trademark in Uganda that resembles or is identical to their trademark (registered in their home country). This protection is accorded only to countries whose laws offer reciprocal treatment to Ugandan trademarks.

An unregistered trademark will also be protected where, in an application for registration, the applicant proves that they or their predecessors in business have used in Uganda the unregistered trademark continuously before the date of registration of the other mark in the country or place of origin.

Protection of unregistered rights is limited. To this end, there is no established test for use that will afford the unregistered mark protection. However, the recognition of unregistered rights is often attributed to substantial goodwill accrued by use of the unregistered mark and notoriety or popularity of the same, both of which are subjective.

Uganda recognises the assignment of unregistered trademarks alongside registered marks on condition that the unregistered mark was used in the same business as the registered trademark. In addition, the assignment must occur at the same time and with the same person with whom the registered trademark is being assigned and in respect of all the goods or services for which the unregistered mark has been used.

The law does not specify how much use is required for the assignment of an unregistered trademark to apply. Accordingly, it appears to be based on numerous factors.

Registered marks

Any legal person (eg, individual or company, among others) may apply to register or own a mark. Should the said party elect to proceed through a representative, they would have to execute a form of authorisation of agent, which is a statutory form stating:

  • the party delegating the authority;
  • the party to whom authority is delegated;
  • the party’s address;
  • the scope of instructions; and
  • the nationality of the principal.

The form is then signed or sealed by the appointing authority with no need for notarisation or legalisation. The use of an agent is optional for local applicants; however, foreign applicants must use agents who are advocates of the High Court of Uganda.

The protection of trademarks is extended to signs or marks or a combination of signs or marks capable of being represented graphically and of distinguishing the goods or services of one undertaking from another. The law has defined signs or marks to include any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or a combination thereof.

The registration of an olfactory mark is difficult since the law requires a trademark to be capable of being represented graphically. To date, Uganda has not granted any such application.

Procedures for registered marks

Examination

Before filing an application, an applicant may obtain advice from the registrar of trademarks as to whether the proposed trademark may be registered based on distinctiveness and whether it is capable of distinguishing goods or services of the proposed undertaking from other undertakings.

Following an application for a trademark, in a preliminary examination the registrar will consider the following factors:

  • similarities with existing trademarks;
  • distinctiveness and graphical presentation of the mark;
  • whether the mark is offensive to public policy and morality;
  • whether the mark is similar to protected symbols (eg, the Red Cross or Geneva Cross), armorial bearings, ensigns such as national flags, emblems or any words, letters or signs that are likely to lead persons to believe that they have government patronage or authorisation;
  • any words such as patent, registered trademark, registered design, copyright or words to likely affect registration; and
  • laudatory words (eg, ‘best’).

During the examination process, the registrar is empowered either to accept an application absolutely or subject it to any limitations, amendments, modifications and conditions that they deem fit.

Further, the registrar may (with the applicant’s consent) treat an application for registration as one filed under Part B rather than rejecting it in its entirety.

Registration

A person that wishes to register a trademark should conduct a search to see whether the trademark is capable of distinguishing goods or services of the proposed undertaking from existing undertakings. The applicant may apply for a search by formal letter to the registrar. Searches include:

  • identical trademark searches;
  • similar trademark searches;
  • search per class;
  • search of all classes; and
  • search on trade names and slogans dating back to 1912.

In the event that the said trademark is available, the applicant may submit the mark for examination by the registrar using a statutory form reflecting the trademark and class in which they wish to register. The registrar’s examination considers whether there is conflict with existing marks or regulations, as well as whether the mark is offensive to morality.

An unopposed application takes between 70 and 90 days. Whereas the search report can be made immediately available to an applicant, review of the application and grant of a notice to the National Gazette takes approximately five to 10 days. The applicant is then required to advertise the application for 60 days in the Gazette. The timelines are subject to various factors, such as the availability of space in the Gazette and the backlog in the registry.

Opposition

According to Ugandan law, any person may oppose or object to the registration of a trademark.

A party may oppose the registration of a trademark within 60 days of the date of advertisement in the Gazette by serving a notice of opposition, in duplicate, stating the grounds for opposition. The registrar will then cause the opposition to be served on the applicant. An applicant is afforded 42 days from the date of receipt of the notice of opposition to respond by counter-statement, laying out the grounds supporting their application.

Regarding evidence, the opponent is required to provide evidence by way of statutory declaration supporting their opposition within 42 days of receipt of the counter-statement. On receipt of the supporting evidence, the applicant is similarly required to provide their evidence by way of statutory declaration, also within 42 days. Finally, the opponent may give further evidence in reply within 30 days of receipt of the applicant’s evidence.

Parties usually file their evidence in support concurrently with the notice of opposition and counter-statement.

On receipt of the last evidence and submissions, the registrar is mandated to give the parties a date for the hearing. If the registrar deems it fit, they may extend the time within which to take any action.

The timeline for opposition is dependent on the conduct of the parties. The only fixed timeline is the 60 days within which to oppose, which may take between four and six months.

Removal

A trademark can be removed from the Register of Trademarks following:

  • cancellation by way of application by an aggrieved party for non-use (three years and one month prior to of filing the application for removal) or through an application regarding proof of prior registration in the country or place of origin;
  • cancellation by way of application or surrender of the entry of the trademark from the register by a registered owner;
  • cancellation where the requirements for a defensive mark are no longer satisfied or where there is no longer any likelihood that use of the trademark in relation to the goods or services would detract from its distinctive character; or
  • an application to the court or registrar requesting that a registered trademark be revoked on grounds of infringement, fraud, error, defect, omission or an entry wrongly remaining on the register.

Renewal

Renewal of a trademark should to be made no more than three months before its expiry. Renewal is completed by application to the registrar along with payment of the requisite fees and lasts for 10 years.

Change of name

A registered trademark owner may apply to change the name on a registered mark by filing a standard form with the registrar and paying the requisite fees.

Enforcement

The Trademarks Act provides that a person may not institute proceedings to recover damages in respect of an unregistered trademark.

A registered trademark owner can enforce its rights through administrative, civil and criminal proceedings. In civil proceedings, the cause of action is infringement. In criminal proceedings, offences include:

  • forging or counterfeiting a trademark;
  • false entries on the register;
  • falsely representing a trademark as registered;
  • unlawful removal of a registered trademark from trademarked goods;
  • falsely applying a registered trademark; and
  • selling goods with false marks.

Offences relating to trademarks for services are not specifically provided for. For example, it is an offence to sell goods bearing false marks, but there is no such law in respect of services bearing false marks.

Remedies

The Trademarks Act grants owners both civil and criminal remedies. For civil remedies, a rights holder may apply for:

  • an interim, temporary or permanent injunction against the infringer;
  • an Anton Piller order or an entry, inspection and removal order in accordance with the Trademarks Act;
  • damages;
  • an account of the profits earned as a result of the infringement;
  • delivery up of the infringing goods;
  • prohibition from the removal of assets from the jurisdiction of the court or wasting of assets;
  • forfeiture and disposal of infringing goods or materials;
  • orders to expunge or vary any entry in the trademark registry;
  • suspension by Customs of the release into free circulation of the infringing goods; and
  • costs of the suit.

Criminal remedies include a fine/penalty, imprisonment or both.

When it comes to damages as a remedy, the law provides that the trademark owner is entitled to claim damages in respect of loss sustained by the trademark owner as a result of infringement, whether or not the person responsible for the infringement has been successfully prosecuted. In general, punitive damages are at the discretion of the courts and, depending on the nature of the case and the extent of the damage, courts may award punitive damages in a successful infringement suit.

Proceedings

The remedies awarded follow the type of proceedings. In Uganda, administrative, civil and criminal proceedings are adopted depending on the cause of action. These include:

  • oppositions;
  • objections and administrative applications for rectification;
  • removal for non-use and to vary or expunge an entry on the register;
  • actions for infringement; and
  • passing off by an aggrieved party.

In criminal proceedings, the police are required to undertake investigations to verify complaints raised. If substantiated, the director of public prosecutions, on behalf of the state, will institute criminal proceedings against the accused. However, a private person may institute private criminal proceedings. Most criminal proceedings stem from a complaint being raised by an affected party. In some unique circumstances, the state, through its parastatal bodies and departments, may file complaints on behalf of the public and the same will then be prosecuted. The standard of proof in criminal proceedings is beyond reasonable doubt as a constitutional requirement.

In civil proceedings for infringement cases, the main issue to consider is likelihood of confusion. The court considers the similarity of the trademarks in terms of look, colours, spelling, pronunciation and the actual goods and services offered. In addition to similarity, courts will consider the distinctiveness of the trademark against the alleged infringing trademark.

The courts generally consider the proof of loss presented as evidence. Evidence may include the dilution of the trademark, loss of clientele and loss of reputation, among other things, to calculate damages. Courts also rely on mitigating factors to determine whether an award of damages is justifiable, such as the purpose of the infringement, the conduct of the defendants and the damage suffered by the plaintiff. Courts are less inclined to grant damages where the infringement was not geared towards making a profit and was used for a charitable or other cause.

Ownership changes and right transfers

The rights in a trademark may be partially or wholly assigned. An assignment must be in writing and although it usually includes goodwill, it is not mandatory. Although the law does not specifically require an assignment to be notarised, general practice has found that a notarised deed of assignment is preferred. However, it must be attested.

An assignment must be recorded with the Registry of Trademarks to become effective by way of application no later than six months from the date of the assignment if, at the time of the assignment, the trademark was used in business in respect to goods or services otherwise than in connection with the goodwill of that business.

The registrar may extend this period at their discretion. A record of an assignment entitles the assignee to a certificate of assignment. An application for registration of an assignment may be made conjointly by the assignor or the assignee or singly by the assignee.

The registrar may refuse to enter an assignment on the register where the party making the application has not adduced evidence of title to the satisfaction of the registrar. If the registrar suspects that there has been an element of fraud in an assignment, they may apply to court to have the register rectified.

A trademark owner may license its rights to another party. Although not mandatory, it is in the interest of a licensee to ensure that a licence is registered for business relations and protection of their rights. Any use of a trademark by a licensee is attributed to the trademark owner. Proof of use and a valid licence are required to support this use. In the event of an exclusive licence, the licensee is deemed by law to be the trademark owner in an action for infringement.

The crediting of trademark owners by registered users under licence or assignment from the trademark owner depends on the agreement between the trademark owner and the licensee or assignee. Whereas some parties may insist on being credited, others may restrain the assignee or licensee from using their information for trade purposes.

Related rights

Trademark and other rights overlap, especially in respect to copyrights, industrial designs and business names.

A design can be registered as a trademark (logo or brand), as well as obtaining copyright (whether registered or not) or industrial design protection. In this instance, any works considered to be of an artistic nature can obtain double protection under copyright or industrial designs and trademarks. However, a design cannot obtain both copyright and industrial design protection.

In the case of business names, a trademark owner can have protection by virtue of an earlier business name registration and subsequent trademark registration. In fact, the use of the business name prior to the trademark being registered will be taken as valid use in any claim of trademark infringement. Although the trademark and business names departments within the country’s recordal system are separate, there is a link between business names which are also known trademarks. Uganda has no specific competition laws in place, as such, on several occasions, courts have relied on their inherent power to prohibit anti-competitive business practices.

Online issues

Uganda has no specific domain name registration policy; however, use and registration of domain names is in accordance with ICANN rules and policy. Uganda usually adopts the UDRP.

In any dispute, the complainant may file a complaint with a recognised institution (eg, WIPO or the National Arbitration Forum) where their complaints are decided by appointed panellists. Complainants can seek remedies such as cancellation or the transfer of the domain name.

Ugandan trademark laws do not specifically provide any provision regarding the unauthorised use of trademarks in domain names, metatags, links or frames; however, the Electronic Transactions Act 2012 and the Computer Misuse Act 2011 provide restrictions and protection against infringement through the use of electronic devices or computers and this extends to infringement of trademark rights through e-commerce.

Apio, Byabazaire, Musanase and Company Advocates

ABM Chambers, House 42

Plot 54, Kanjokya Street

Uganda

Tel +256 39 322 8339

Web https://www.abmadvocates.com

Jamina Apio

Founding partner

[email protected]

Jamina Apio is a founding partner with more than nine years of experience in intellectual property, cyber issues, data protection law and alternative dispute resolution. As an advocate and accredited mediator, Ms Apio has a vast portfolio on IP matters with clients in the technology, beverages, household, construction, energy and telecoms industries. 

She is a member of the Uganda Law Society IP Cluster and the Uganda Registration Services Bureau IP Users Forum. She regularly contributes to the IP legal and regulatory framework, including the Industrial Property Act and the proposed Trademark and Geographical Indications Regulations. 

Ms Apio has an LLB from Makerere University and a postgraduate diploma in legal practice from the Law Development Centre, Kampala. 

Enoch Kakuru

Principal associate

[email protected]

Enoch Kakuru is a principal associate, specialising in corporate and commercial matters and with a keen interest in intellectual property and alternative dispute resolution. Mr Kakuru is a member of the Young International Council for Commercial Arbitration. 

He has vast experience representing clients in contentious matters before the IP registry, various courts of judicature and IP enforcement cases, particularly in copyright and trademark infringement. He has also handled complex litigation matters regarding corporate crime, as well as transactional matters regarding mergers and acquisitions involving the disposal of IP assets. 

Mr Kakuru has a bachelor of laws degree from the Uganda Christian University and a postgraduate diploma in legal practice from the Law Development Centre.