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Trademark Registration Requirements in Uganda

Registration of trademarks in Uganda is enabled by the Principal Legislation on


trademarks in Uganda the Trademarks Act No.7 of 2010 that repealed the Trademarks
Act Cap 217 and Chapter 37 of the Penal Code Act Cap 120; and its regulations, the
Trademark Regulations Statutory Instrument No. 58 of 2012.
There are several types of marks that qualify for registrability. These include trademarks;
certification marks; identical or resembling trademarks; associated trademarks; series of
trademarks, and defensive trademarks. A trademark is defined under the Act to mean a sign or
mark or combination of signs or marks capable of being represented graphically and capable
of distinguishing goods or service
s of one undertaking from those of another undertaking. A sign or mark is defined under the
Act to include any word, symbol, slogan, logo, sound, smell, colour, brand label, name,
signature, letter, numeral, or any combination of them.
The Trademarks Act entitles any person who claims to be the owner of a trademark used or
proposed to be used to apply for its registration. This may be a natural person or entity. Goods
and services are classified in accordance with the third schedule to the Trademark
Regulations 2012 that make reference to the 9th Edition of the International Classification of
Goods and Services for the purposes of the registration of marks under the Nice Agreement
of June 15 1957 (as revised) Published by the World Intellectual Property Organization in
1992, including the explanatory notes and lists of goods and services published therein.
Registration may be effected in Part A or Part B which have different requirements. In order
to have a trademark registered in part A, it must consist the name of the company, individual
or firm represented in a particular manner, the signature of the applicant for registration or of
some predecessor in business, an invented word or words, a word or words having no direct
reference to the character or the quality of the goods or services, and not being according to
its ordinary signification, a geographical name of surname. The word must be distinctive and
there must be adduced evidence of distinctiveness.
Distinctiveness means in the case of a trademark relating to goods, adapted in relation to the
goods in respect of which the trademark is registered or proposed to be registered, to
distinguish goods with which the owner of a trademark is or may be connected, in the course
of trade, from goods in the case of which no connection subsists; or in the case of a trademark
relating to services, adapted in relation to the services in respect of which the trademark is
registered or proposed to be registered, to distinguish services with which the owner of the
trade mark is or may be connected in the course of trade, from services with the provision of
which he or she is not connected.
Registration in Part B requires that the trademark shall be capable, in relation to the goods in
respect of which it is registered or proposed to be registered, of distinguishing goods with
which the owner of the trademark is or may be connected in the course of trade from goods in
the case where no connection subsists. A trademark relating to services to be registered in
Part B must be capable, in relation to services in respect of which it is registered or proposed

to be registered, of distinguishing services with the provision of which the owner of the mark
is or may be connected in the course of business from services the provision of which he or
she is not so connected. An applicant is free to seek the preliminary advice of the registrar on
distinctiveness before making an application. Additionally for a trademark to be registered in
either Part A or B, it must be capable of graphical representation.
The law also outlines unregistrable trademarks; the registrar may refuse to accept any
application
upon
which
any
of
the
following
appear
(a) the words patent, patented, by letters patent, registered, registered trade mark,
registered design, copyright, certified, guaranteed, to counterfeit this is a forgery
or words to like effect;
(b) the words Red Cross or Geneva Cross and representations of the Geneva and other
crosses in red, or of the Swiss federal cross in white on a red ground or silver on a red
ground, or such representations in a similar colour or colours;
(c) representations of the armorial ensigns of Uganda or any device so nearly resembling
them as to be likely to lead to mistake, or of the national flag, or any words, letters, or devices
likely to lead persons to think that the applicant has Government patronage or authorization;
and
(d) a representation of armorial bearings, insignia, a decoration or a flag of any state,
administration, city, town, place, society, body corporate, institution or person.
The law also restricts registration of the following marks; trademarks likely to deceive or
would be contrary to law, morality or any scandalous design; a trademark consisting of a
word commonly used and accepted as a name of a single chemical element or compound; a
shape that results from the nature of the goods themselves; the shape of goods that is
necessary to obtain a technical result and the shape that gives substantial value to the goods.
The law also prohibits registration of trademarks that are identical and resembling trademarks
already on the register by a different owner, subject to exceptions.
Effect of registration
Registration confers the exclusive right to use the mark and the right to act in case of
infringement. A registered owner also acquires a right to assign his or her trademark.
Additionally, in all proceedings relating to a registered trademark, the fact that a person is
registered as owner of a trademark is prima facie evidence of validity of the original
registration of the trademark and of all subsequent assignments and transmissions. A person
may not institute proceedings to prevent or recover damages for trade mark infringement
unless his trade mark is registered. However an unregistered owner has a right to bring an
action for passing off at common law.
The law does not make registration of trademarks compulsory. Mandatory registration comes
into play where an opposition has been made to the registration of a trade mark on grounds of
prior registration in the country of origin. The person or entity making the opposition must
make an undertaking to register the trademark with in a given period of time and must furnish
such undertaking with the registrar of trademarks at the time of filling the opposition that he

or she will take all the necessary steps to effect registration of that trademark registered in the
country of origin with the registrar of trademarks.
Term of registration
Registration of a trademark lasts for a period of seven (7) years from the application filing
date. Registration is renewable every ten (10) years upon payment of a prescribed fee.
Renewal of registration
Renewal is a
registration. If
removed from
expiration

pre-condition for the continuation of rights conferred by the original


no fees for renewal are paid with in the prescribed time, the trademark is
the register. The law requires renewal to be made at any time before the
of
the
last
registration
of
the
trademark.

ABOUT THE AUTHOR: Ninsiima Irene


Ms. Ninsiima is an advocate and a commissioner for oaths. She holds Bachelor of Laws
Degree from Makerere University, Post Graduate Diploma in Legal Practice from Law
Development Centre and masters of laws degree of Makerere University. Ms. Ninsiima
previously worked with M/s Kiboijana Kakuba & Co. Advocates as an advocate wherein she
was involved in high profile real estate and land transaction matters. She handled company
law, hire purchase law and general civil litigation.
Copyright Angualia Busiku & Co. Advocates
More information about Angualia Busiku & Co. Advocates

Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.

Associated Trademarks in India


An associated trademark allows a business to brand new products and services with its
primary mark or use derivative forms of its primary trademark. This type of
trademark also allows a business to register a mark similar to one belonging to another
business.
The reason for granting such trademark can be well explained through an illustration. Say a
trademark T has been granted for ready-made garments under class 25 in the year 1994. In
the year 1999, the same proprietor started the business of footwear under the same brand and
applied for registration of it in class 25. If registration is provided to him for footwear, he will
have two trademark registrations for the same trademark in the same class. Later on, if he
assigns the trademark of footwear to another person, there will be two entities having the
same trademark T in one class. This will create a lot of confusion in the market. Therefore,
associated trademarks are given to overcome such situations.
The Trademarks Act 1999 provides for various provisions dealing with associated
trademarks. The definition of associated trademark is given in section 2(1)(c) of the
Trademarks Act 1999 which reads as followsassociated trademarks means trademarks deemed to be or required to be, registered as
associated trademarks under this Act.
Further, Section 2 (3) provides that
for the purpose of this Act, goods and services are associated with each other if it is likely
that those goods might be sold or otherwise traded in and those services might be provided by
the same business and so with description of goods and description of services
Apart from this, section 16 of the act provides thatwhere a trademark which is registered, or is the subject of an application for registration, in
respect of any goods or services is identical with another trademark which is registered, or is
subject of an application for registration, in the name of same proprietor in respect of the
same goods or description of goods or same services or description of services or so nearly
resembles it as to be likely to deceive or cause confusion if used by a person other than the
proprietor, the Registrar may, at any time, require that the trademarks shall be entered on the
register as associated trademark marks
The trademarks are registered as associated trademark in cases where two marks registered
under same class are identical or so nearly resemble each other as to likely deceive or cause
confusion if used by a person other than the proprietor in respect of the same goods or
description of goods or services. The primary trademark which is granted covers the primary
intellectual property of a business. But the business may also apply for associated trademarks
for dissimilar goods and services. Say a distiller named Jack can register a trademark for
Jacks wines, but he must register associated trademarks for Jacks beer and Jacks
whiskey. So if a company wants to expand its business and wants to file an application
associating it with its earlier mark and has thus filed an application with broader
specifications, it can do so provided the application also contains specifications of the earlier

application.
Under section 55, where use of a registered trademark is required to be proved for any
purpose, the tribunal may accept the use of one of the associated trademark for proving use of
the associated registered trademark in question. So where a person has been granted
associated trademark for different classes of goods, his sincere usage of the trademark in one
class would automatically mean that he has been using it in the remaining classes as well.
In case of P. Kamala Devi Chordia Vs. P. Ganeshan and Ors[1], the honble Intellectual
Property Appellate board held that Section 55 of Trademark Act, 1999 enables the authority
to accept use of a registered associated Trade Mark or of a Trade Mark with addition or
alterations, not substantially affecting its identity.
Thus, anyone can file associated applications provided the change, addition or alteration does
not substantially affect its identity. Moreover, if the mark is withdrawn or is not valid
anymore, the applicants also have the option to request the Registry to dissolve the
association by filing a particular form. Under section 44 it is provided that the two
associated trademarks shall be assigned or transmitted together and there would not be a
separate assignment of two associated trademarks. This provision aims at removing any sort
of confusion in the market. In case if the owner can prove to the satisfaction of the Registrar
that the two associated trademark has attained a separate distinctiveness in the market then
the owner can apply for the dissolution of association under section 16 (5) of the Trademark
Act, 1999.
To sum up, associated trademarks in India shall have the following benefits:Prevents the
existence of multiple rights in the market.
i. Prevents the existence of multiple rights in the market.Keeps in check defensive
registration as only those marks which have same/similar business are required to be
associated.
ii. Keeps in check defensive registration as only those marks which have same/similar
business are required to be associated.
iii.For business which keeps expanding their services and including newer goods, associated
trademark is a good option for them.
iv. Also in a cancellation proceeding if one of the two associated trademarks is in use then the
use of one can be considered as use for cancellation proceeding against the second associated
trademark.
v. By virtue of section 44, no two associated trademarks can be assigned or transmitted
separately. It can be done so only after the dissolution of the association. This helps in
removing confusion in the market.
vi. If only one of the associated trademarks was continuously being used and not the others,
the renewal of the registration of the trademark cannot be rejected solely because the
remaining trademarks were not in use

DRAWBACKS:
Many people take advantage of the benefits of the associated trademark system with regard to
cancellation and renewal and use the provisions to obtain an excessive number of so-called
stock trademarks. This might result in an increase in unused trademarks. Moreover under
associated trademarks, the primary trademark has an impact on the subsequent trademarks as
well. Hence, if the primary trademark is not renewed or stands invalid due to any reason, the
subsequent trademarks shall also be affected.
AUTHOR: Priyanka Karla
Copyright Intepat
More information about Intepat
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.

TRademark Maintenance: How Do I Maintain a Registration?


A Trademark is a Living Asset. If you have a registered trademark with the United
States Patent and Trademark Office (USPTO), you have taken a very important step
in protecting your businesses brand. However, what happens after you receive that
registration? Do you own your trademark forever? Not exactly. Once you have obtained
a federal trademark registration, you must take certain steps to maintain the
registration or you risk having it canceled by the USPTO.
A trademark is a living asset. In order to keep it alive you must show your continuous use of
the trademark with the goods or services with which it was registered, and follow the
maintenance requirements set forth by the USPTO. These requirements include the filing of
specific documents, along with the payment of fees at regular intervals. The deadlines for
filing these documents are calculated from the registration date shown on the registration
certificate. Failure to file these documents will result in the cancellation and/or expiration of
your registration.
Declaration of Use
The first document that is typically required for maintaining your trademark rights, after it
has been properly registered, is called the Declaration of Use or Excusable Nonuse under
Section 8 of the Lanham Act. See 15 U.S.C. 1058. This Declaration must be filed between
the 5th and 6th year after the registration date and requires the payment of a fee to the
USPTO. The filing may also be made within a 6-month grace period after the expiration of
the 6th year with the payment of an additional fee. A Declaration of Use requires that the
trademark owner:
a) identify which items in the initial registration are currently being offered for sale;
b) supply a specimen of the trademark as it appears on products or in connection with
services being offered for sale; and,
c) pay the applicable filing fee.
In addition, the trademark owner may indicate which goods should be deleted from the
registration, if certain products are no longer being offered for sale. Anything that is not
currently being offered for sale should be deleted.
Application for Renewal
Between the 9th and 10th year after the registration date of the trademark, the owner must file
a Declaration of Use and/or Excusable Nonuse and Application for Renewal, or a combined
form of both of these documents, pursuant to Sections 8 and 9 of the Lanham Act. Id.; See
also, 15 U.S.C. 1059. The USPTO forms combine the Section 8 declaration identified above
with the Section 9 renewal application. The renewal application also requires payment of a
filing fee and constitutes a request to keep a mark registration active and confirms the
accuracy of the information being provided to the USPTO. Finally, the Declaration of Use
and/or Excusable Nonuse and Application for Renewal must be filed every subsequent 10
years after its initial filing.

Summary
Maintaining your trademark registration is imperative in protecting your brand name and/or
logos so that potential trademark infringements can be more easily stopped. Losing your
trademark rights through cancellation of a trademark can cost your business a valuable asset
and allow third parties to begin using a trademark that you invested a significant amount of
time, goodwill and resources in developing. If you have a registered trademark and seek
maintenance protection, contact the experienced trademark & copyright attorneys to insure
your rights are not lost.
AUTHOR: Karen Hawkes
Copyright Gehres Law Group, P.C.
More information about Gehres Law Group, P.C.
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.