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Monday, 24 July 2017

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.

ASSESSMENT OF LIKELIHOOD OF CONFUSION IN TRADEMARK OPPOSITION PROCEEDINGS IN UGANDA

By Ninsiima Irene and Angualia daniel:  
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.
The duty of the Judge/court or the registrar; as has been emphasized by courts overtime, is to decide, upon seeing the marks, whether the opponent’s mark  is identical or nearly resemble the one complained of, as to be likely to deceive or cause confusion in the minds of an average consumer. The court must look at the marks and compare so as to arrive at its own conclusion on the similarity of the marks, see Tuskys (U) Ltd V Tusker Mattresses (U) Ltd;[4] Aglo Fabrics (Bolton) Ltd &Anor V. African Queen Ltd &Anor.[5]

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.
The Convention under Article 6 (2) requires a party seeking recognition and enforcement of its trademark in any country of union to make an application for registration of such trademark in the member country of union. This may be done irrespective of whether the same trademark is registered in the country of origin or not.  The application is considered for registration depending on the domestic legislation of the member country where the application is made and its requirements.

Tuesday, 11 October 2016

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.

Wednesday, 10 August 2016

Why You Should Hire A Trademark Attorney

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

Trademark 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.