DOES UGANDA RECOGNISE AND ENFORCE TRADEMARKS FROM COUNTRY OF ORIGIN?

By Ninsiima Irene and Angualia Daniel

The Paris Convention for Protection of Industrial Property, 1883 is the International Legal Instrument that provides provisions applicable to recognition and enforcement of Trademarks registered in country of Origin. Uganda is a contracting party to the Paris Convention for Protection of Industrial Property, 1883, and its domestic legislation recognises the provisions of the convention above. Uganda’s domestic legislation on recognition and enforcement of trademarks from country of origin is in pari materia with the provisions of the convention above.

The Convention recognises the international law principal of territoriality and states under Article 6 that a trademark duly registered in the country of union shall be regarded as independent of marks registered in other countries of union, including the country of origin. The convention makes it clear that registration of a trademark in the country of origin or any country of union does not of its own take away the right of any other person to register the very mark in any other member country of union. Under Article 6 (1) of the Convention, recognition of a trademark in a country of union is dependent on the domestic legislation of such member country of union where the trademark is sought to be enforced. Thus, registration of a trademark in a country of origin or any other country of union does not per se grant recognition of such trademark in another country of union unless the requirements/ conditions of that country’s domestic legislation, where the trademark is sought to be enforced are met. Read more

Dangers of Using Unregistered Trademarks

DANGERS OF USING UNREGISTERED TRADEMARKS AND BENEFITS OF REGISTRATION

dangersWhat is a trade mark?. Different authorities have given the meaning of a trademark. The Trademarks Act 2010 of Uganda defines a trademark to mean: a sign or mark or combination of signs or marks capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking.

For every successful and time tested corporate brand (trademark), that everyone wants to associate with, behind the scenes, a lot of effort and resources have been sunk into intricate trademark development and aggressive protection. Company brands and trademarks are amongst a company’s valuable assets. A study done by the UK’s IP office reveals that an estimated 6% of most company investments are spent in company brand protection.

Branding starts and centers around your use of distinctive images, symbols, colors and styles, and caricatures, which most appropriately separate and preposition your goods, or services as unique from others on the same market, giving both a protection to your customers and also acquiring brand image and build up brand loyalty amongst your consumers. Read more

Conduct a Trademark Search!

WHY YOU NEED TO CONDUCT A TRADEMARK SEARCH

trademarksAn intending applicant for registration of a trademark shall first carry out a search to ascertain whether the trademark exists in the register (section 5).

The motive behind initial trademark search is to reduce the number of opposition to trademarks registration proceedings. It is also important to conduct a search prior to launching a new brand/ product into the market. You do not want to be faced with law suits and court injunctions immediately after spending alot of money on the new brand because it is infringement of an existing trademark. Not long ago, Facebook was forced to pull down the business page of houzify.com after complaints of trademark infringement were made by houzz.com. At the time of it being pulled down, the Facebook page of houzify had close to 54000 followers. You don’t get such followers without effort. To get such a following on a new brand, you need to trip the effort that was used in promoting the brand that was pulled down. Read more

Determine the Value of Your Trademark

HOW DO YOU DETERMINE THE VALUE OF YOUR TRADEMARK?

db410-trademark_protectionIn general, the value of a trademark is based directly on the trademark’s earning power. Where little or no income history is available, however, imagination, common sense and experience may be the best guides to apply in ascertaining a trademark’s value. In addition, studies of the industry in which the trademark will be used or the products marketed, market surveys of probable sale prices and expected profits, and opinions of industry experts may also be applied.

The value of a trademark lies in the goodwill associated with that trademark. Goodwill is an intangible asset that provides added value to the trademark owner’s worth (such as a recognizable brand). However, in many cases it can be quite difficult to ascertain the goodwill and then place a true value on it at a point in time, because of the many variables that must be considered. For example, reasonable people can differ on future expectations, such as opportunities for increasing the value of the trademark and competitive threats and marketplace risks to the trademark. Read more

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. Read more

Uganda Trademark search – Why you need the study

Uganda Trademark search – Why you need the study

trademarksDuring trademark registration process in Uganda, objections may arise for several causes: similarity with a previous trademark (graphic or phonetic), similarity with a notorious famous, trademark too generic, etc. Trademark Comprehensive Study will help you identify potential obstacles so you can properly evaluate your chances of registration.

What trademark search should cover

Trademark Comprehensive Study should include the following sections:

a) Class Identification: Trademarks are registered in classes; the search report should define the classes for your trademark according the description that you provide the trademark attorney. Read more