ASSESSMENT OF LIKELIHOOD OF CONFUSION IN TRADEMARK OPPOSITION PROCEEDINGS IN UGANDA

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By Ninsiima Irene and Angualia daniel:  

ninsiima@lawyers-uganda.com/ angualia@lawyers-uganda.com

An opposition to the registration of a trademark grounded on existence of a similar mark will be upheld by the Registrar of Trademarks or the court, where the opponent establishes a likelihood of confusion to an average consumer in the territory where the earlier mark is protected. Likelihood of confusion is the possibility that an average consumer will be unable to distinguish goods or services bearing the earlier mark from goods or services bearing the contested mark from a different origin because of identity or similarity of the marks and identity or similarity of the goods or services covered by the mark.

The Trademarks Act 2010[1] prohibits registration of identical or resembling trademarks, and confers the exclusive right to the use of a trademark by the registered owner.[2] The protection given to a registered owner of a trademark is based on the essential function of a trademark which is not to describe the goods or services but rather to indicte their source or origin. According to Kerly’s Law of Trademarks and Trade names;[3] the essential function of a trademark is to guarantee to the consumer or the ultimate user of the origin of the goods or services by enabling him without any possibility of confusion to distinguish that product   from products which have another origin. Thus the law prohibits registration of identical or resembling trademarks, except as otherwise provided. Read more

Why You Should Hire A Trademark Attorney

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CONSIDERING TRADEMARK REGISTRATION IN UGANDA? THIS IS WHY YOU SHOULD HIRE A TRADEMARK ATTORNEY

hirelawTrademark owners who attempt to file and prosecute their own trademark applications work on the believe that by not hiring a trademark attorney, they will save on the attorney fees. From experience, these trademark owners end up spending more money in the process. They make many mistakes in the process and pay trademark attorneys later on to correct the mess. It is understandable that many times, this group of trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non trademark attorneys.

I have attended to many clients that have filed their own trademark applications, and some that have used non-attorney services. These clients are usually up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application, or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them. In over 60% of the cases, I have had to file fresh trademark applications on learning that the non-trademark attorney did not file the right documents or missed a crucial stage in the process that rendered what was done of no effect. Read more

Determine the Value of Your Trademark

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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

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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

Trademark Protection In Uganda

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Trade mark protection:

trademark-registrationProvision is made in the Act for the registration of trade marks for goods and for services. However, as the Rules under the old Act are still in force, they make no provision for the classification or registration of services.

The Act also provides for certification marks as well as for defensive registration of trademarks, and for the registration of series of trade marks.

The Act further provides for the register to be pided into two Parts, Part A for trademarks which are distinctive, and Part B for trademarks which are capable of distinguishing.

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The Common Law Rights: In Trademark Registration

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Common law rights:

law rightsFrom an enforcement perspective, Uganda is a former British Colony and, as such, it recognizes that a person who has acquired a reputation in a mark in relation to goods or services may prevent others from misrepresenting that they are associated with the proprietor in a manner that is likely to cause confusion and deception and damage to the person with a reputation.

This right is expressly recognized by the Trade Marks Act which states that nothing in the Act shall be taken to affect a right of action against a person for passing off goods or services as the goods or services of another or the remedies in respect of the right of action.

Marking of goods:

The marking of goods is optional. Read more

conventions Uganda Is a member of

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Uganda

Uganda is an independent Republic within the British Commonwealth situated in East Africa. It is a landlocked state bordered by Sudan in the north; Democratic Republic of Congo in the west; Rwanda and Tanzania in the south and Kenya in the east.

International/regional conventions:

Uganda is a member of the following international/regional intellectual property related agreements:

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Trademark registration procedure

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Trademark registration procedure in Uganda

  • Trademark-RegistrationsConduct 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.

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Types of marks which can be registered

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Different types of marks which can be registered in Uganda

  1. A Service mark. This is a trademark that is used for advertisement of services. For example a hotel can register its mark for its services. Businesses use service marks to identify their services and distinguish them from the services of their competitors.
  1. A Collective mark. This is a trademark that distinguishes the goods and services of members of an association from those of any other undertaking. Collective marks usually belong to a group or association of enterprise. Their use is reserved to the members of such group or association. Read more

Definition of trademark

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db410-trademark_protectionA trademark is a sign that is used to distinguish the goods and services offered by one undertaking from those of another. The trademark must be able to distinguish goods and services and should not be misleading.

A trademark may consist of any word, symbol, design, slogan, logo, colour, label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically. A trademark protects goods whereas service mark protects services of the registered user.

Trademark registration in Uganda is governed by the Trademarks Act, 2010. The Act provides for among other things; the registration of trademarks, the procedure for and duration of registration, the effect of trademark registration and action for infringement of a trademark, the  fees for legal proceedings and appeals and trademark related offences. Read more