Trade and Service Marks

– The Trademarks Act, 2010, in force since September 3, 2010.
– The Trademarks Regulations, 2012, in force since September 4, 2012.
– The Trademarks (Amendment) Regulations, 2021, in force since February 5, 2021.

Membership in International Conventions

See under “Patents of Invention“.

– ARIPO, Banjul Protocol, as last amended November 1999, effective November 21, 2000.

Filing

Applicant: the first user of a mark is entitled to registration.

Foreigners and nationals not living in the country: no distinction is made between them; both may apply and obtain registration.

Trademarks of foreigners: protected in the same manner as those of nationals. Foreigners must have an address for service in the country.

Registrability: a trademark may consist of any word, symbol, design, slogan, logo, sound, smell, color, label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically.

Kinds of protection: trademarks and service marks. 

Series marks: registrable.

Novelty: the trademark applied for must not resemble a trademark already registered.

Not registrable: representations of Their Majesties or any member of the royal family, or any colorable imitations thereof; 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 background or silver on a red background or such representations in a similar color or colors. Representations of the royal or imperial arms, crests, armorial bearings and insignia or devices so nearly resembling them as to be misleading; representations of the British royal or imperial crowns, or of the royal, imperial or national flags, or the words royal or imperial or any other words, letters or devices likely to lead persons to think that the applicant has royal patronage or authorization.

National flags: the national flag of Uganda is not registrable but the national flag of any other State may be registered and the Registrar may then require that the applicant files the consent of an authorized official of the country concerned.

Names or portraits: Regulation No. 18 reads: “Where the name or representation of any person appears on a trademark, the Registrar shall, if he so requires, and before proceeding to register the mark, be furnished with the consent of that person or, in the case of a person recently deceased, of his legal representative, and in default of such consent, the Registrar may refuse to register the mark.”

Collective (certification) marks: a certification mark is a mark adapted to distinguish, in the course of trade, goods certified in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods not so certified.

Classification: International Classification of the Nice Agreement (12th Edition).

Multi-class applications: not possible.

Priority: according to the Paris Convention.

Territory covered: the whole of the territory of Uganda.

Filing requirements for an application (to be sent to resident agent):
1. Name and address of the applicant;
2. List of goods to be registered;
3. Power of attorney, not legalized;
4. 10 clear prints of the mark; not required for word marks. Printing blocks, no longer required for device marks:
5. If priority is claimed, the filing particulars from the country in which prior application was made.

For a change of name or address:
1. A certificate of change of name or address; original or notarized copy.

Electronic filing: available.

Electronic signatures: are not accepted (only wet signatures).

Examination

Amendment of application: is provided for.

Examination: there is a strict examination as to registrability and anticipation.

Opposition: must be filed within sixty days from the date of advertisement, but extensions to this period are readily obtainable. The grounds for opposition are more or less the same as in Tanzania (Tanganyika).

Disputes about ownership: are settled by the Registrar or by the court. Section 15 (3) reads: “Where separate applications are made by different persons who wish to be registered as proprietors of trademarks that are identical or similar to each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or upon an appeal by the court, as the case may be.”

Letters of consent: accepted.

Application kept secret: not provided for.

Appeal: appeal lies from the Registrar to the court.

Urgent registration: not provided for.

Publication: after acceptance, trademarks are advertised in the Uganda Official Gazette. From May 2021, trademark applications may also be published in the Uganda Registration Services Bureau (URSB) Journal, which is published weekly on the URSB website at the following link https://ursb.go.ug/dynamic-pages/ursb-journal

Correction of registration: possible.

Protection

Delivery of document: official action is taken approximately two to three months after the date of filing and the certificate of registration (in electronic format) is issued approximately four to five months after the date of advertisement, sixty days thereof being the opposition period.

Beginning of protection: as from the date of filing.

Duration – renewal: seven years as from the date of filing and renewable for periods of ten years thereafter.

Application for renewal: possible within three months before the expiration of the registration period.

Latest term of renewal: the day of expiration.

Term of grace for renewal: up to one month after the date of advertisement of removal.

Compulsory character of registration: not provided for.

User rights and obligation to use: a mark may be removed from the Register on the grounds of non-use for a continuous period of five years.

Marking of registered goods: not required, but advisable.

Text of marking: “Registered Trade Mark”.

Modification of the mark: possible, if not substantially affecting the identity of the mark.

Changes in the list of goods: possible, but the specification of the goods may not be enlarged.

Licenses: are provided for, but must be recorded with the Registrar.

Assignment: possible, with or without the goodwill of the business.

Modification of Protection after Registration

Right of prior user: a prior user of the trademark may apply for the expungement of a registered trademark if the use of such a registered trademark could lead to deception and confusion.

Opposition to registered marks: not provided for.

Compulsory licenses: not provided for.

Expropriation and nullification: a mark may be removed on the grounds of non-use.

Validation of invalidated marks: not provided for.

Provision for restoration: a mark removed on the grounds of the non-payment of renewal fees may be restored, if good reason for non-payment can be shown to the satisfaction of the Registrar. Where an application is made for the registration of a mark similar to or identical with a mark which has been removed on the grounds of non-payment of renewal fees, the removed mark is still deemed to be on the Register for a period of one year after the date of removal.

Infringement and penalties: infringement is restricted to the actual goods for which registration has been obtained. Sections 57 and 58 provide for penalties for falsification, etc.