It is common for Kenyan companies to expand into other East African countries like Uganda & Rwanda. Below we offer a procedure for carrying our registration of a trademark in Uganda.
A trademark is a sign that is used to distinguish the goods and services offered by one undertaking from those of another. This may include Service marks, collective marks, certification mark, defensive mark or associated marks. In Uganda, the Registration of Trademarks in Uganda is governed by the Trademarks Act, 2010. The duration of trademark upon registration is for a period of seven years and upon expiry is renewed every ten years.
- 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. A person may thereafter seek advice of 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.
- b) 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.
- c) 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.
- d) Publication of Application. If the application is accepted by the registrar, the application will be advertised in the official Government Gazette for 60 days. 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.
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 registration.
TRADEMARK REGISTRATION IN TANZANIA
The trademark legislation for the registration of trademarks in Tanzania Mainland and Zanzibar are different. In Tanzania, the Trade and Service Marks Act, 1986 and Trade and Service Marks Regulations, 2000 are the core legislations whilst in Zanzibar the Trade Marks Decree, Cap. 159 and Trade Mark Rules, Government Notice No. 52 of 1932 and Government Notice No. 47 of 1955 are the regulatory laws. In Tanzania, the first registration period is seven (7) years. The term of registration can be indefinitely renewed for further ten (10) years after expiry of original registration or of the last renewal of registration. In Zanzibar, the first registration period is fourteen (14) years. The term of registration can be renewed indefinitely for further fourteen (14) years after expiry of original registration or of the last renewal of registration.
Trademark registration process
- a) Conducting search
The Search conducted at the Trademark Offices is not compulsory. However, this is done with a view to identifying whether or not the proposed trademark is identical with or similar to a registered trademark or trademark application that has already been received.
- b) Application for filing.
Any natural person, firm or other kind of legal entity may apply for trademark registration.. Applicants not residing in Tanzania must appoint a trademark agent residing and practicing in Tanzania.
The following are filing requirements:
- Full Name, address and occupation of the applicant;
- Payment of official fee;
- The Power of Attorney to appoint a trademark agent(forms are used).The Power of Attorney does not require notarization or legalization;
- Ten (10) prints of the proposed trademark (except for word marks in ordinary type);
- Priority Document (if applicable) with verified English translation;
- If the proposed trademark is in a language other than English (e.g. if it is in Arabic or Chinese characters), the Trademark Office normally requires the application to be accompanied with verified English translation; and
- Specification of the goods and services for which registration is to be registered.
- c) Examination
A Trade Marks Office Examiner reviews the application to make sure that the trade mark meets the requirements prescribed by the Trade and Service Marks Act, 1986 (Tanzania) and Trade Marks Decree, Cap 157 (Zanzibar). Thereafter a report is issued.
- d) Acceptance and opposition period/ Publication
When the Examiner is satisfied that there are no outstanding objections from the Trademark Office, the trademark will be recommended for acceptance and advertised in the Patents, Trade and Service Marks Journal. When the trademark is advertised, third parties can oppose the registration of the trademark within sixty days (for Tanzania) and ninety days (for Zanzibar) from the date of advertisement. If no opposition/objection is received or a ruling is issued in favour of the Applicant, a certificate is issued upon payment of the necessary registration fees.
It can be noted from the two procedures that the process is substantively similar despite the different legislative regimes. The minimal variations can be worked out at the regional levels to streamline registration process in all East African countries.