Uganda: Opposition To The Registration Of A Trademark In Uganda

Last Updated: 9 September 2016
Article by Ninsiima Irene

KEY ELEMENTS

  1. Who can make an opposition?
  2. Grounds for opposition.
  3. Protection of trademarks registered in country of origin.
  4. Opposition procedure and forum.
  5. Key documents required.
  6. Role of trademark agents.
  7. Fees involved.

Who has standing to make opposition?

Opposition may be made by any person claiming prior rights to exclusive use of the mark or any other interested person that has sufficient grounds.

Grounds for opposition

There are several grounds that a person making an opposition may rely on. First, Opposition may be made against registration of a trademark under s. 12 on ground that the trademark is similar or nearly resembles the trademark already registered and is therefore likely to deceive or confuse consumers; secondly, opposition may be brought under the provisions of s. 44 on grounds of prior registration in the country of origin. A person may also rely on such grounds as, prior application; prior use; mark not being distinctive; mark being deceptive; mark being generic. A person may also rely on any other ground of unregistrability, i.e. the mark not protectable in a court of law.

Opposition procedure and forum

Opposition procedure is found under s. 12, 44 and 45 of the Trademarks Act 2010 and Regulation 28 and 29 of the Trademark Regulations SI NO 58/2012. Opposition commences by the person giving notice of opposition to the registrar of trademarks in Form TM 6 opposing the registration.  This notice of opposition must be made within 60 days from the date of publication of the application in the gazette. The notice must contain the particulars of the application namely; the applicant, the application number, the person opposing and their address, the date of advertisement of the application. The notice must also specify the grounds upon which the opposition is based with supporting documentary or any other evidence.  Where registration is opposed on grounds that the mark resembles a mark(s) already registered, the numbers of the registered mark(s) and the number of the mark(s) advertised in the gazette must be set out in the notice. It must then be signed by the person making the opposition or their Attorney/ advocate. The notice is required to be in duplicate.

The registrar thereafter serves a copy of the opposition on the applicant who is required to respond within forty two days by way of a counterstatement in form TM7 setting out the ground upon which the applicant relies as supporting the application for registration of the trademark.

Where a party giving notice of opposition or an applicant sending a counterstatement after receipt of a copy of the notice, neither resides nor carries on business in Uganda, the registrar may require him or her to give security, in such form as the registrar may deem sufficient, for the costs of the proceedings before the registrar, for such amount as the registrar thinks fit, and at any stage in the opposition proceedings, may require further security to be given at any time before giving his or her decision in the case.

The opposition is heard before the registrar.

Protection of trademarks registered in country of origin

The law in Uganda affords legal protection to trademarks registered in the country of origin. Where a trademark is registered in respect to goods or services in a country in which the goods or services originate, the registered owner in the country of origin may object to the registration of the trademark in Uganda by a different applicant that is neither its agent or dealer or user of its products. The opposition is filed with the registrar of trademarks in the form TM6 stating several grounds upon which the opposition is based.

S.12 and s.44 empower the registrar to refuse to register such a trademark if it is proved to his satisfaction by the person making the opposition to registration that the mark is identical or nearly resembles a trademark which is already registered in respect of the same goods or services in a country or place from which the goods originate. The person opposing the registration is required to furnish an undertaking to the satisfaction of the registrar that he or she will apply for registration in Uganda of the trademark registered in the country or place of origin with in three months from the date of giving the notice of opposition and will take all necessary steps to complete the registration.

However, the protection given by the law under s. 44 in respect of a trademark in relation to goods and services originating from a country other than Uganda is only accorded if the country of origin of the goods or services accords to goods and services originating from Uganda the same treatment for example; a country which accords similar treatment to Ugandan goods there by virtue of reciprocity between Uganda and that country where both are member states and signatories to the Paris Convention on the Protection of Industrial Properties 1883.

The applicant may file a counterstatement to the opposition supporting his application and the registrar will go ahead to register the trademark if the applicant proves in his counterstatement that he or she or his or her predecessors in business have continuously used the trademark in Uganda in respect to the same goods or services of which he or she has made an application from a date before the date of registration of the other mark in the country or place of origin.

Key documents required on the part of the person making opposition

  • Notice of opposition of registration of a trademark in form TM6
  • A statutory declaration stating the grounds of opposition.
  • A copy of the gazette notice.
  • If the opponent is an entity, evidence of registration for example a certificate of incorporation.
  • Evidence of prior registration of the mark, or prior application or use.
  • A representation of the mark.
  • An undertaking to effect registration of the trademark in Uganda by an owner of a mark registered in country of origin (where applicable)

Key documents required on the part of the applicant making a counterstatement

  • A counterstatement in form TM7.
  • A statutory declaration setting out the grounds upon which the application for registration of the trademark is based.
  • If the applicant is an entity, evidence of registration for example a certificate of incorporation.

Role of trademark agents

The law recognizes trademark agents in Uganda. S. 93 of the Trademarks Act authorizes agents so appointed to act on behalf of their principals in any act in connection with a trademark or proposed trademark or a procedure in connection with a trademark. Regulation 2 of the Trademark Regulations indicates that a trademark agent must be an advocate of the High Court of Uganda. Regulation 10 of the Trademarks Regulations confers powers upon trademark agents to act on behalf of their principals. It details that an application, request, or notice which is required or permitted by the Act or Regulations to be made or given to the registrar or court may be signed, made or given by or through a trademarks agent. All other communications between an applicant, a person making a request or giving a notice and the registrar or the court may also be signed, made or given by or through an agent.

Appointment of a trademarks agent is made by signing and sending to the registrar or the court an authority to that effect in the form TM1 or in any other such form the registrar or court may consider sufficient. Once an agent is appointed, service of any document relating to the proceedings is taken to be service upon the person who appointed the agent and any communication directed to be made to that person may be addressed to the agent. Attendances before court or the registrar may also be made through the agent though the registrar reserves powers to require the personal signature or attendance of; the applicant, opponent, proprietor, registered user or any other person.

Fees involved

Fees include professional, government and court fees. Professional fees vary depending on how a particular advocate bills for providing their services. With respect to government and court fees, the first schedule to the trademarks regulations lists the fees.

Item

Matter of proceeding before the registrar

Foreign applicants

     US$

National Applicants

          Shs

1

Notice of opposition before the registrar under s. 12 for each application opposed by the opponent

250

100, 000

2

On lodging a counterstatement in answer to notice of opposition

150

50, 000

3

On hearing an opposition  before the registrar

250

100, 000

4

On notice of opposition before the court for each application opposed by the opponent

250

100, 000

5

On hearing each opposition before the court

250

100, 000

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions