Uganda's trademark regulations have been amended, with 26 changes to provisions in the Trademark Regulations 9/2021. The most significant of these are the implementation of the registration of trademark agents and the introduction of an IP journal and fees for time extensions. The amendments were published in the Uganda Gazette on 5 February 2021 and are now in effect for trademark applications and requests filed on or after this date.
The amendments aim to tackle several existing loopholes in the practical enforcement of the Trademarks Act 17/2010 and to aid the country in moving closer towards international trademark standards.
Register of agents
The rules relating to registering a 'trademark agent' – defined as "an advocate of the High Court registered by the Registrar as required by regulation 11" – have been altered. Those who qualify as an agent may apply for registration and once all requirements have been met, the registrar will enter the individual's name in the agent's register. Although only individuals can register as agents, a firm's address may be entered. The registrar will then publish the list of trademark agents on its website, which will be regulated and renewed each year. This is a significant move towards discouraging fraudulent trademark agents.
Classification of marks, goods and services
Under the previous regulations, for the purposes of trademark registration, goods and services were classified in accordance with the ninth edition of the International Classification of Goods and Services (Nice Agreement), which was published in 2007.
The new amendments now refer to the current edition of the International Classification of Goods and Services and clarify that the most recent, 11th edition should be used.
The amendments also state that marks should be classified in terms of the current edition of the International Classification of Figurative Elements of Marks under the Vienna Agreement – the regulations previously omitted this type of classification.
In this regard, the amendments follow international standards and provide for the application of any future amendments to the International Classification of Goods and Services or changes to the International Classification of Figurative Elements of Marks.
Publication of applications and notices
While the regulations expressly mention publication in the Uganda Gazette, the publication of a trademark application will no longer be confined to this publication.
Publication may now take place in the Uganda Gazette "or other media as the Registrar may direct". The authorities have already announced that the Uganda Registration Service Bureau (URSB) IP Journal is considered to fall under 'other media'.
As such, the URSB can now publish trademark applications and other related matters. These will be published in electronic format on a weekly basis. The first edition of the URSB IP Journal was published on 14 May 2021.
To file a time extension request, a new statutory form must be submitted and a corresponding official fee must be paid.
It is no longer acceptable to request a trademark search by way of a letter together with proof of payment of the search fee. A new statutory form is now required for a trademark search alongside payment of the corresponding fee.
In addition, an applicant's email address and telephone number must now be provided among its address details and should be included in an application filing.
A second notice of renewal by the registrar is now required before a trademark registration can be revoked.
This is a co-published article, which was originally published in the World Trademark Review (WTR).
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.