Our firm handles the registration, renewal, licensing and searching of
trade marks in Uganda. We also handle litigation.

1.   DOCUMENTS:

The minimum documentation for a trademark application is:

• A Power of Attorney (POA) simply signed i.e not notarised.
  there is no need to legalize with the local consulate.
• A Certified Copy of the home registration of the trademark (if any)
• Five (5) representations of the mark.
• An application form.
   

2.      FURTHER INFORMATION:
 

• International Agreements - Paris Convention, TRIPS Agreement
• Classification - International; Single-class filing, provides for 34
• classes only, no provision for service marks.
• Protectable Marks - Trademarks, certification marks
• Home registration - Not needed
• Agent - Required for foreigners (simple power of attorney)
• Examination - Substantive examination
• Unregistrable -
   a) Lack of distinctiveness; flags, coats of arms,emblems etc of states or international organizations; descriptive and otherwise non descriptive expressions,
  b)  Excluded from registration on other grounds - public interest,
  deceptive and scandalous mark, marks contrary to accepted principles of morality or valid laws, marks identical to or resembling marks used by
  another.
• Time necessary for Registration - 3 months or 90 days provided there is no citation, objection or opposition encountered.
• Registration Duration - 7 years from filing date
• Renewal Duration - 14 years
• Renewal Term - within 3 months before expiration of renewal date;extension possible.
• Publication - After acceptance by the Registrar of Trade Marks
  in The Uganda Gazette.
• Opposition Term - Within 60 days of publication; extension possible if allowed by Registrar.
• Use Requirement - Non-use for 5 years following the registration marks the Trade mark vulnerable for cancellation unless it is a defensive registration for a well known trademark.
• Assignment - possible
• Licensing - Possible

ANTI COUNTERFEITING IN UGANDA

Uganda has laws to protect against counterfeiting of goods. Counterfeiting goods is both a criminal and criminal offence in Uganda.

There is the common right of passing off which is used in some instances. The reliefs granted on proof of passing off include damages and/or injunction.

The Trade Marks Act provides for civil offenses whilst the Penal Code Act provides for criminal offenses and their punishment.

The Trade Marks Act has provisions against counterfeit copies of goods.
Sections 356 to 359 of the Penal Code Act are the most useful provisions in this respect.

Section 356 defines a trade mark as-

a.      a mark lawfully used by any person to denote any chattel   to be an
         article or thing of the manufacture, workmanship, production, or      
         merchandise of such person or to be an article or thing of any
         peculiar or particulardescription made or sold by such person;

b.      any mark or sign which in pursuance of any law in force for the
         time being relating to registered designs is to be put or placed
         upon or attached to any chattel or article during the existence or
         continuance of any copyright orr other sole right acquired under
        the provisions of such law.

Section 367 provides that:      Any person who does any of the following
things with intent to defraud or to enable another to defraud any person, that is to say-

a.      forges or counterfeits any trade mark;
b.      applies any trade mark, or any forged or counterfeit trade mark, to
         any chattel or article not being the merchandise of any person
         whose trademark is so forged or counterfeited;

c.      applies any trade mark or any forged or counterfeit trade mark to
         any chattel or article not being the particular or peculiar
         description of merchandise denoted or intended to be denoted by
         such trade mark or by such forged or counterfeit trade mark;

d.      applies any trade mark or any forged or counterfeit trade mark to
         anything intended for any purpose of trade or manufacture, or in,
         with which any chattel or article is intended to be sold, or is sold or
         offered or exposed for sale;

e.      encloses or places any chattel or article in, upon, under or with
         anything to which any trade mark has been falsely applied, or to
         which any forged or counterfeit trade mark has been applied;

f.      applies or attaches any chattel or article to any case, cover, reel,
        ticket, label, or other thing to which any trade mark has been falsely
        applied, or to which any false or counterfeit trade mark has been
        applied;

g.     encloses, places, or attaches any chattel or article in, upon,
        under, with, or to any thing having thereon any trade mark of any
        other person, is guilty of a misdemeanour.

Section 358 provides that :     Any person who sells, or exposes, or has in
his possession for sale or any purpose of trade or manufacture, any goods or things, with a counterfeit trade mark affixed to or impressed upon the same or to or upon any case, package or other receptacle in which such goods are contained, shall, unless he proves that, having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the mark, be guilty of a misdemeanour.

Section 359 provides that:      All chattels, articles or instruments-

a.      to which a counterfeit trade mark has been applied; or
b.      which have been enclosed, or placed, or attached contrary to any of
         the provisions of section 357 of 358; or
c.      which have been used for applying a counterfeit trade mark,
         shall be forfeited.

There are other minor provisions against conspiracy to commit misdemeanour.

Whoever is guilty of a misdemeanour may get about five years in jail.