New Trademark Act comes into force

The new Trademark Act (7/2010) came into force on September 3 2010.

One of the most significant amendments is the possibility to register service marks. This development has been welcomed by service providers, which have waited for a long time for their brands to be protected. The new law also provides for the maintenance of an electronic register.

Other changes include the following:
  • Applicants will be required to conduct searches under Section 5 of the act. Many applicants would prefer to avoid this altogether, but in practice, it may benefit them in two ways:
    • First, once the fees have been paid, the applicant cannot obtain a refund if it discovers that a third party already owns an identical or closely similar mark. The applicant can apply only for the removal of the mark - for example, on the grounds of non-use. The rationale behind this change is that applicants will save on filing fees.
    • Second, if the applicant conducts a search before filing, it will have a better idea of whether third parties are likely to oppose its application based on registered trademarks (however, the electronic database is still under construction and, therefore, searches are imperfect). The search results should not in themselves act as an absolute bar to an application, especially if the goods covered by the existing marks are different from those covered by the mark applied for. This change may help reduce the number of opposition proceedings.
  • Under Section 6, applicants now have the option to seek preliminary advice from the registrar as to the distinctiveness of their marks. It seems that this provision does not apply to pending applications - it could have been another way of reducing the number of opposition proceedings and saving costs for the parties involved.
  • The publication period remains unchanged at 60 days.
  • Section 24 protects the good-faith use by a person of his own name or place of business, as well as the description of the characteristics of his or her goods or services. This change is particularly important, as such protection was not clearly provided for under the old act.
  • Section 27 provides for concurrent use registration. Under this provision, "the registrar or court may permit the registration of the same mark by more than one owner in case of honest concurrent use or in other special circumstances".
The act also contains new provisions which clarify issues such as non-use and revocation. The process of developing regulations to implement the new act will represent an opportunity for trademark practitioners and Trademark Registry users to make recommendations on which provisions require clarification or further amendment.

Paul Asiimwe, Sipi Law Associates, Kampala

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