HOW DO I HAVE A TRADEMARK RECOGNISED AND PROTECTED IN ONE OR SEVERAL AFRICAN STATES

By Ninsiima Irene: Email: ninsiima@lawyers-uganda.com
Regional protection of trademarks in African states that are member states to the Banjul Protocol on Marks is achieved through registration of a trademark(s) in a member state (s) through ARIPO secretariat offices or directly through the Intellectual Property Office of the member state. The African Regional Intellectual Property Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among African States on Matters of Intellectual Property is entrusted with the registration of marks and the administration of such registered marks on behalf of the Contracting States.
The Banjul protocol in line with the ARIPO’s objectives was adopted to promote the harmonisation and development of intellectual property laws and to establish common services necessary for the co-ordination, harmonisation and development of intellectual property activities affecting its members. The protocol was adopted on November 9 1993 at Banjul and entered into force on March 6 1997. As of today, it has been ratified by a number of African States that include; Uganda, Kenya, The United Republic of Tanzania, Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Zimbabwe, Gambia, Ghana, Kenya, Mozambique, Sierra Leone, Sudan and Zambia. The protocol provides a centralised trademark registration procedure.
Direct registration in a member state is done by an application to the Intellectual Property Office of such member state and the application is considered basing on the domestic legislation of such member state and its requirements. This is in line with the Paris Convention for Protection of Industrial Property, 1883, which incorporates the principal of territoriality and allows a sovereign state to be able to decide on whether a given trademark should be registered basing on its national laws.
All applications through ARIPO Secretariat for the registration of a mark are filed either directly with the Office or with the Industrial Property Office of a Contracting State by the applicant or his duly authorized representative who then transmits the application to the secretariat. Where the applicant seeks to have his mark(s) protected in several countries, such countries have to be designated on the application. The application is considered by the secretariat and once it meets all the formal requirements, it is forwarded by the secretariat to each designated state. Upon receipt of the application, the designated state then considers the application basing on its national laws.
An application for registration of a Mark which has been accepted by any designated State is then published in the ARIPO Marks Journal as having been accepted by the designated State or designated States concerned. At any time after the publication in the Marks Journal of an application as accepted by the designated State or designated States but before the registration of the mark by the secretariat, any person may give a notice of opposition to the application for registration in a designated State or designated States. Once notice of opposition is lodged, the application is treated according to the opposition procedures laid down under the national laws of the designated State or designated States concerned.
Where no opposition has been made or where it has been successfully defended, the mark(s) is registered by the Secretariat office three months after the publication in the Marks Journal. The registration is then recorded in the Marks Register and the Secretariat Office issues to the applicant a certificate of registration. The fact of registration of a mark is then published in the Marks Journal.
The registration of a mark remains valid for a period of 10 years from the filing date and may be renewed for further periods of 10 years.  The renewal of the registration must be effected on or before the date of expiration of the original registration or of the last renewal of the registration though a grace period of 6 months is allowed, in either case, on payment of a surcharge.
The registration of a mark by the ARIPO Secretariat has the same effect in each designated State, with respect to rights conferred by the mark, as if it was filed and registered under the national laws of each such state. The national laws of each Contracting State apply to the cancellation of a registration, whether based on non-use or any other grounds.

Exclusive Rights to Use Trademark as a Whole

EXCLUSIVE RIGHTS TO USE TRADEMARK AS A WHOLE AND NOT IN PARTS

It is a well established principle in trademarks law that the exclusive right to use a trademark applies to its use as a whole and not in parts. Many a times a trademark can be a composite trademark having various elements in it, and when the trademark is registered, the protection is provided to the mark as a whole and not in parts.

The principle was recently reinstated by the commercial court division of the high court of Uganda in the case of Tuskys (U) Limited Versus Tusker Mattresses Uganda Limited. Tuskys (U) Ltd, registered a trademark “TUSKYS” in respect of goods in Class 18. On the other hand, Tusker Mattresses Ltd a Kenyan registered holding company of Tusker mattresses (U) Limited registered a trademark in Class 16 in the name and style of: “Time To Go TUSKYS Your Friendly Supermarket”. Tusker Mattresses Uganda Limited which was assigned the trademark runs retail chain supermarkets in Kampala under the said trademark. Tuskys (U) Limited brought the suit alleging that its trademark was being infringed by the defendant who was operating its supermarkets under the name “TUSKYS”. It sought for a permanent injunction restraining the defendant from any further use of its registered trademark among other reliefs.
While agreeing with Tuskys (U) Limited, court stated that there was no doubt that the word “TUSKYS” which is the plaintiff’s mark also stands out in the mark used by the defendant. If the two marks are put side by side as demonstrated below the words “Your Friendly Supermarket” in the mark used by the defendant would distinguish the marks because one would know that that of the defendant is a supermarket as the mark suggests. That if Tusker Mattresses (U) Limited used the trademark assigned to it without leaving out the words “Time To Go Your Friendly Supermarket” it would not cause any likelihood of confusion. The defendant’s abandonment of the mark assigned to it and adoption and use of the mark “TUSKYS” singularly made it identical to the plaintiff’s mark. Tusker Mattresses (U) Limited was ordered to revert back to the use of its assigned trademark “Time To Go TUSKYS Your Friendly Supermarket”.
Court reiterated the concept of considering trademarks as a whole. The proprietor gets exclusive right to the use the trademark as a whole. In the same way, the proprietor cannot preclude others from using any part of the trademark independently or in a combination of difference words altogether. To claim rights over any part of such trademark, the proprietor must apply for registration of such part as separate trademark.

Trademark registration procedure in Uganda

Trademark registration procedure in Uganda
  • Conduct a Search. A person who intends to apply for the registration of a trademark carries out a search in the trademarks registry to ascertain whether the trademark exists in the register and if not, whether it is suitable, that is, it is not offensive.
  • Advice by the Registrar. A person may if he or she wishes obtain advice from the registrar as to whether the proposed trademark appears to the registrar to be inherently adapted to distinguish or capable of distinguishing goods or services of the proposed undertaking from those of other undertakings. The registrar shall then advice accordingly.
  • Filing of Application for trademark registration. The application is filed upon payment of application fees. The application should contain the mark proposed to be used, the class of goods or services, the name, address and the signature of applicant. If the applicant is a foreign company, a power of attorney or form of authorization to an advocate of the High Court of Uganda will be sufficient.
  • Examination of application. The registrar will then determine the trademark is registrable and whether it conflicts with prior existing registrations or applications for trademark registrations.
  • Publication of Application. If the application is accepted by the registrar, the application will be advertised in the official government gazette for 60 days.
  • Certificate of registration. If there is no opposition after the expiration of sixty days of the advertisement, the Registrar shall upon payment of the necessary registration fees by the applicant enter in the trademark register and issue certificate of registration of the trademark
Fees payable for trademark registration
The fees payable depends on whether the trademark is a local or foreign trademark.
The other determining factor is whether the applicant intends to use an attorney in the process of trademark registration or will follow up the trademark registration process without the help of an attorney. The amount payable in professional fees depends on the attorney engaged in the registration process.

Opposition of trademark registration
There are instances when the trademark which is intended to be registered conflicts with an already registered trademark. The law allows such a person to oppose the registration of a trademark that he or she is of the opinion that it conflicts with their trademark.

Procedure for opposition of trademark registration

  1. Filing notice of opposition. The opposing party files a notice of opposition and statement of grounds with the registrar of trademarks within sixty days from the date of publication of the trademark application. The applicant is then sent a copy of the opposition documents for a response.
  2. Counterstatement filed by applicant. The applicant files a counter statement within thirty days. The counter statement is then sent to the applicant for reply if any and further evidence.
  3. Hearing of the opposition and decision. The opposition is then set down for hearing and a decision is made by the registrar. Any party aggrieved by the decision of the registrar has a right through his or her advocate to appeal to the High Court of Uganda.