Uganda now allows flexible specifications, convention priority claims and service marks
Since the recent implementation of new software, the Trade Marks Registry in Uganda has insisted that specifications of goods and services be worded exactly in accordance with the class headings as set out in the 9th edition of the International (Nice) Classification. As a result, acceptance notices have been issued requiring that specifications that deviate from the wording used in the Nice Classification, be changed to reflect the exact wording used in the international class headings - before the application can proceed to advertisement. Following intense lobbying from Spoor & Fisher and other practitioners, this requirement has been reviewed and subsequently withdrawn. Applicants are once again permitted to file using either specific wording of their choice or the wording of the international class headings.
Convention Priority Claims
The Trade Marks Registry in Uganda has also announced that applications may now be filed claiming priority under the Paris Convention. Although Uganda has been a member of the Paris Convention since 1965, it remains a common-law country. This means that an international agreement can only become part of the domestic law if it has been enacted expressly into that national law by an Act of Parliament. Neither the Uganda Trademarks Act 2010 nor the former legislation it replaced, contains provision for international treaties, including the Paris Convention. In a serious dispute, a priority claim allowed by the Registrar may not be upheld by the Courts. However, as priority claims are clearly being accepted in practice, and provided that their vulnerability is understood, we feel that the pragmatic approach would be to claim priority if there is an opportunity to do so.
While previous legislation in Uganda made no provision for service marks, they have become registrable since the introduction of the Uganda Trademarks Act 2010. The Trade Marks Registry in Uganda received the first service mark applications on 29 September 2010. To proceed with a service mark application, the usual details of the mark, the applicant and the services to be claimed are required. The International (Nice) Classification 9th Edition is used and a separate application required for each class. Each application must be accompanied by a power of attorney. On filing, we are required to search for prior, conflicting registrations.
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