TRADEMARKS FILING AND PROSECUTION IN UGANDA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Uganda are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.
|Relevant office||Uganda Registration Services Bureau|
Ministry of Justice and Constitutional Affairs (URSB)
|Nice classification||Yes (9th edition)|
|Multi class system||No|
|Documents required for filing a trademark application||Simply signed Power of Attorney. If the applicant is a foreign company, a Power of Attorney or Form of Authorization (TM no. 1) to an agent (Advocate of the High Court) will be required.|
|Prosecution process||Filing publication of the mark in trademark journal opposition (within 60 days from the date of publication) registration renewal|
|Registration term||7 years from the date of filing|
|Renewal term||10 years|
Trademark searches in Uganda
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark searches in Uganda can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the Uganda Registration Services Bureau (URSB). The official website of the registry provides with an option of E-services of intellectual property where there is an option available for conducting a trademark search. For conducting trademark search an application has to be submitted along with the prescribed fee. The application form asks for the application details, search details, trade mark details and payment details for conducting a search.
Trademark word search edition of Uganda follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Uganda can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Uganda.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filing trademark applications in Uganda
A person may file single class trademark application in Uganda.
Trademark applications in Uganda can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Uganda:
Ordinary trademark applications filed in Uganda are applications which are filed without claiming any priority. Ordinary applications in Uganda can be filed at the trademark registry and it can also be filed online through the official website of the registry. For the physical filing the application form is available on the official website as TM2 Application of form for registration in the intellectual property forms column. For the online registration an E-service is available in the intellectual property column as trademark application, where you can apply for a trade mark online. Multi class trademark applications cannot be filed in Uganda, separate applications are to be filed for each class. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority/convention trademark applications in Uganda:
A priority trademark application should be filed in Uganda within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the protection of Industrial Property, signed in Paris, France, on March 20, 1983, established a union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim on the Paris convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Uganda within 6 months of after the date on which the application was made in the convention countries.
Trademark classes for goods and services in Uganda
Uganda follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
Trademark examination in Uganda
Once the application is submitted for registration, the application is then examined by the registrar to its inherent registrability and also check the conflict with other prior registered marks.
The registrar may refuse the application or accept the application absolutely or subject to such amendments, modifications, conditions or limitations, as the registrar may deem fit.
In case of the refusal and conditional acceptance of the trademark application, the registrar must have to provide grounds in writing for his/her decision. A person who is aggrieved by the decision of the registrar may appeal the decision to the court.
An appeal should be made in the prescribed form and the court shall upon hearing the applicant and the registrar shall make a decision as to what amendments, modifications, conditions or limitations the application is to be accepted.
Trademark opposition in Uganda
Once the application for registration has successfully completed the examination stage, the application is accepted by the registrar and it is published in the Uganda gazette for the third party observation. Any interested party may file a notice of opposition within 60 days from the date of publication. The notice shall be given in writing in the prescribed form and shall include the statement of grounds of objections, the form is available on the official website of the registry as TM6 Notice of opposition to application for registration of a trademark.
The registrar will then serve the copy of the notice to the applicant and the applicant will have to send a counter statement in the prescribed manner along with stating the grounds in support of his/her application within the prescribed time limit. If the applicant does not respond within the prescribed time limit the application for the registration will be deemed abandoned.
If the applicant sends a counter statement, the registrar will furnish the copy of the counter statement to the opponent and after this will hear the partied and will take evidence in to consideration, the registrar will decide as to what conditions or limitations registration id to be permitted.
Any party who is aggrieved by the decision of the registrar may appeal the decision to the court. Appeal should be made in the prescribed form.
On appeal the court will hear both the parties and the registrar and will give an order as to what conditions or limitations registration is to be permitted. 
Trademark registration in Uganda
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 7 years from the date of filing of the application and registration certificate is issued.