TRADEMARK REGISTRATION IN UGANDA

INTRODUCTION

Almost every business has a mark or a trademark of some kind. It may be a company name, a trade name, a product name, a logo, a slogan/jingle, a shape, packaging, colors of a product etc. These are all valuable ways a company may use to indicate the origin and/or quality of their goods or services to their consumers.

WHAT IS A TRADEMARK?

Trademark has been described by various scholars to mean a symbol, a word or words, legally registered or established by use of representing a company or product.

The Trademarks Act of Uganda 2010 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.

WHAT TO CONSIDER WHEN DEVELOPING A GOOD TRADEMARK

Target Market: To develop a good brand, first off, one must know their target market. Who are you potential customers? How would you want your product to be perceived? Imagine a typography that best conveys the feeling of your brand.

Logos, Graphics and Colors:  With your target market in mind, you can come up with the brand color patterns and logos consistent with your products. Your trademark may include a graphic, and if so, choose graphic expression which will best complement your brand. Choosing a graphic that says something about your business will help create a unique brand.

Catchy tagline or Jingle: How do your products make the consumer feel? This should guide you in creating a tagline, catchy and short enough to deliver the message to the mind of the customer. It should be easy to remember. This will form an integral part of the brand.

Legalities: Before the brand is developed and later on sold, ensure to research your idea to confirm you do not infringe another company’s brand. Ensure that your name and logo do not resemble another company’s brand as this is likely to cause confusion among customers and exposes you to a potential legal risk.  Ask yourself the hard question on whether the trademark helps distinguish your brand from competition?

 

WHY YOU SHOULD REGISTER YOUR TRADE MARK

Successful companies rely on protecting their brand and goodwill. Infringement on any of these can cost the company millions. Having a registered company is only the first step towards achieving full protection for your business and brand. Registration of your trademark is the absolute protection one can have against infringement of a brand.

·         Benefits

      Exclusivity/ monopoly rights;

When you register your trademark, you enjoy exclusive rights to use the mark. The law in Uganda grants a proprietor of a registered mark, exclusive rights to use the mark in respect of certain goods or services, the right to sue for infringement and passing off. Under the law, the proprietor is also entitled to compensation among other remedies in case of unauthorized use of a registered mark. The law further gives you a right to object to the use or registration of confusingly similar marks. Upon registration, you have national protection against unauthorized use of your mark.

 

      Registered trademarks are intangible assets.

By registering your trademark, the goodwill attached to that trademark can be licensed or transferred in the same way any other asset owned by the company would. Upon registration, the proprietor acquires rights to use, sell, and license their trademark.  Without a registered trademark, one would then need to transfer the entire business as a going concern to transfer such goodwill.

 

      Applications in foreign jurisdiction.

Trademark registrations are territorial. Therefore, registration of trademark in your home country will help you enjoy benefits when registering in another country. However, registration of trademark in your home country only forms a basis of applications filed outside your country.

      Adds value to your business.

Generally speaking, every business owner wants to stand out from their competitors. A trademark will protect the unique parts of your business such as your business name, logo and slogan.

When a trademark is registered, it can be widely used in selling your products and can be instantly recognized when used over a long time. In turn, your goods are easily identified. Once your trademark is registered, you will be able to add the “®” symbol on your name and logo which puts everyone on notice that your mark is registered, adding to the prestige of your company.

 

DANGERS OF USING AN UNREGISTERED TRADEMARK

If you have a business, you probably registered a company with Uganda Registration Services Bureau (URSB).  A lot of Small Medium Enterprises (SMEs) mostly indigenous companies, do not see the value of registering their trademarks. If you question the value of registration, below are some risks your company is exposed to if you trade with an unregistered mark.

 

      Losing your brand: Every year, several brands are stolen. When your trademark is unregistered, you cannot with certainty claim to own the brand or mark. Any other person may use the same mark or brand for the same products. Where two or more people are using the same brand, the person who registers the mark first, takes the advantage. This may get you entangled into undesired litigation and potentially requiring you to pay damages, withdraw you products from the market, redesigning your entire brand and packaging.  If you have to rename your company, and create a new branding, you could possibly lose customers in the ensuing confusion. You may also be required to account and share all your profits with the registered trademark owner.  

 

      Product is at risk of duplication: If your product is widely consumed and your trademark is unregistered, copycats are out there to take advantage of this. They may duplicate your products and trade them with the same mark, in turn confuse your unsuspecting customer. You risk having the market flooded with fake versions of your product. If your trademark is not registered, you may have no basis to place a claim against the said imitators.

 

      Higher litigation costs: Defending an unregistered trademark gets more expensive than defending a registered mark. Even though an unregistered mark has some legal protection, the burden of proof for an unregistered mark is higher than that of a registered mark because with a registered mark, the law presumes ownership by the registered proprietor. A proprietor of registered mark has rights such as exclusivity and monopoly rights that may be claimed which may not be the case for unregistered marks. In a case of passing off, a registered proprietor will be entitled to compensation, among other remedies. This is not the case if you claim under an unregistered mark.

 

 

DOES UGANDA RECOGNISE TRADEMARKS REGISTERED IN OTHER COUNTRIES?

Yes, Uganda recognizes trademarks registered in the country of origin.

The Paris Convention for Protection of Industrial Property, 1883 is the International Legal Instrument that provides for 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.

Uganda ratified this instrument and subsequently domesticated it under S. 44 of the Trademarks Act 2010.  The said legislation ensures protection of marks registered in countries outside Uganda. The person who seeks protection of the said mark must however make a formal application for registration of the mark. Uganda’s domestic legislation on recognition and enforcement of trademarks from country of origin is in “pari material” with the provisions of the convention above.

CONCLUSION

From the foregoing, it is apparent that it is not only paramount to register your trademark to adequately protect your brand, but also provides numerous benefits to the proprietor of such registered trademark.

Trademark registration will offer legal protection to your business, help you build your brand, prevent competitors from registering similar trademark, and protect you against unauthorized use by unscrupulous business players among others.

Should you wish to know more or have your intellectual property protected, it may be worth getting in touch with a lawyer.

 

Author

Benard Ainamani (Commercial Lawyer)

Partner at Blair & Co Advocates

Tel: +256 774851102

Email: benaine2014@gmail.com

Web: www.blairandcompanyadvocates.com

Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.