Uganda has recently published their Trademark (Amendment) Regulations No. 9 of 2021 (the Amendment) which amends Trademark Regulations No.58 of 2012 (the Regulations). The Amendment was published on 5 February 2021 and has since come into effect. The Amendment is welcomed as it brings about changes that addresses shortcomings in practical aspects of the Trademarks Act No.17, 2010 (the Act) and it aligns Uganda's trademark practise with international trademark standards. The most notable amendments are discussed below:
Classification of Goods & Services and Marks
The Amendment brings clarity to the classification of goods and services in terms of the International Classification of Goods and Services (Nice Classification established by the Nice Agreement). Regulation 12 made specific reference to the 9th Edition of the International Classification of Goods and Services, which was published in 2007, and has since been amended twice. The Amendment now refers to the current edition of the International Classification of Goods and Services which should be applied. This amendment clarifies the fact that the most recent Edition (the 11th Edition) should be used for the classification of goods and services. The Amendment also states that marks should be classified in terms of the current edition of the International Classification of Figurative Elements of Marks under the Vienna Agreement, whereas the Regulations were previously silent on the classification of marks.
These amendments are in line with international standards and makes provision for the application of any future amendments to the International Classification of Goods and Services or amendments to the International Classification of Figurative Elements of Marks.
Publication of Applications and Notices
The Amendment also brough about a new Direction on the Publication of Trademarks which was issued on the 11th of May 2021. Up until the 11th of May 2021, trademark applications were published in the Uganda Gazette, together with other general Government notices. In terms of the Direction on the Publication of Trademarks, the Uganda Registration Services Bureau (URSB) can now publish trademark applications and other related matters in the URSB Journal. This Journal will be published in an electronic format and in color on a weekly basis. The first edition of the URSB Journal was published on the 14th of May 2021 and can be accessed on URSB's Journal website.
Other Amendments
In terms of the Amendments Trademark Agents are now required to be registered with the Registrar, who will publish a list of the registered agents on their website. Trademark Agents will now be regulated which will discourage fraudulent agents.
The email address and telephone number of the applicant will now from part of the applicant's address and should be included in an application.
A new statutory from (Form TM42A) is now required to request an extension of time with the Registrar, and an official fee of USD50 is payable for each extension.
It is no longer acceptable to request a trademark search by way of a letter together with the proof of payment of the search fee. A new statutory from (Form TM27) is now required for a request for a trademark search together with the applicable search fee.
The second notice of renewal issued by the Registrar before the expiry of a trademark will no longer be issued.
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