Uganda: trade marks in Africa - your questions answered

Trade mark activity is growing rapidly in Africa, both as regards protection and enforcement. Yet there is still a great deal of uncertainty. This is the first in our series of country-specific updates. Here we focus on Uganda.

Why?

With a population of 38 million and a GDP of US$91 billion (GDP rose 4.6% in 2016), this East African nation is worth investing in. Like many other countries in Africa, Uganda has issues with counterfeit goods. It is also a country that fails to provide specific protection for well-known marks. So registration is all-important.

Who?

Anyone who claims to be the owner can file a trade mark application, provided that they have a genuine intention to use.

What?

According to the legislation, the Trademarks Act 2010, a sign that is capable of distinguishing and that is capable of graphical representation can be registered. There is specific reference to slogans, sounds, smells and colours, although there is no mention of tastes. Three-dimensional marks can be registered subject to the usual exclusions regarding shapes that arise from the nature of the goods, shapes that are necessary to achieve a technical result, and shapes that give substantial value to the goods. There is provision for series marks, defensive marks and certification marks, but there is no provision for collective marks or GIs.

How?

There is no online filing and local representation is required - a Power of Attorney is needed, but no notarisation or legalisation is required. Priority can be claimed; the Nice Classification applies; an application can only cover one class; an applicant is required to conduct a search; and there is examination as to absolute and relative grounds - unusually Uganda still divides its register into Part A and Part B (for less distinctive marks). Disclaimers can be entered; associations can be required; and registration on the basis of honest concurrent use is a possibility. An application is open to third-party opposition. Appeals go to the High Court. Uganda is not a member of the Madrid Protocol. Uganda is a member of the ARIPO trademark system but we do not recommend this route.

When?

The registration term is seven years; the renewal term is 10 years; a renewal must be filed in the three-months before expiry (although restoration is possible); registrations become incontestable after seven years; and the non-use term is three years (use by a registered user will suffice).

 

Date published: 22 June 2017
Author: Spoor & Fisher

Tags: Uganda trade marks Madrid protocol ARIPO