Intellectual Property

We handle trademark, copyright and patent application procedures, declarations of use and renewal. We also handle the protection of these trademarks, patents, designs, copyrights and layout designs.


General information
Area: 241 038 km2
Population: 33.4 million
Capital: Kampala
Currency: Ugandan Shilling
GDP: $ 41.7 billion (2010)
Internet domain: .ug
Languages: English (official language), Swahili, Luganda
Working week: Monday - Friday
Exports: Coffee; cotton; tea; gold; fish products; horticultural products
Imports: Petroleum; cereals; medical supplies; capital equipment; vehicles

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 agreements:
Banjul Protocol (of ARIPO) (since 2000)
Harare Protocol (of ARIPO) (since 1984)
Lusaka Agreement (ARIPO) (since 1978)
Nairobi Treaty on Olympic Symbols (since 1983)
Paris Convention (since 1965)
Patent Cooperation Treaty (since 1995)
WIPO Convention (since 1973)
WTO/TRIPS (since 1995)

IP legislation:
Trade marks
Trade Marks Act no 17 of 2010
Trade Marks Rules (issued under the repealed Trade Marks Act, Chapter 217 of 1953 and expressly retained in force)
Trade Marks Act, Chapter 217 of 1953 (repealed by the 2010 Act)

Patent & Industrial Design
The Indusrial Property Act 2014
The Industrial Property Regulation Act 2014

Geographical Indications
Geographical Indications Act 2014

Trade Marks
Law:
Trade Marks Act no 17 of 2010
Trade Marks Rules (issued under the repealed Trade Marks Act, Chapter 217 of 1953 and expressly retained in force)
Trade Marks Act, Chapter 217 of 1953 (repealed by the 2010 Act)

Note: Although Uganda is a member of the Paris Convention, the Act does not make provision for claiming priority. It is therefore not clear whether convention priority can be claimed.

Furthermore, although Uganda is a member of the Banjul Protocol of ARIPO, no provision is made in Uganda's national law for the recognition of ARIPO registrations in which Uganda is designated, nor for the filing of ARIPO applications in Uganda.

Trade mark protection:
Provision 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 trade marks, and for the registration of series of trade marks.

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

Protection of well-known marks:
Although no express provision is made for the protection of well-known marks, the Act does provide for a trade mark registration to be removed on the ground that an identical or similar trade mark was, prior to the registration in Uganda, registered in respect of the same or similar goods or services in another country from which the goods or services originate. The application for the removal of the Uganda trade mark must be made within seven years of its registration.

Types of trade marks:
The Act provides for the registration of the following marks:
Trade marks for goods and services
Certification trade marks
Defensive trade marks
Series of trade marks.

Definition of a mark:
Word and device marks (any sign, mark or combination of signs or marks) are allowed. A sign or mark is defined to include any word, symbol, slogan, logo, sound, smell, colour, brand, label, name, signature, letter, numeral, or any combination of them.

Definition of a trade mark:
A trade mark is defined 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.

Definition of a certification trade mark:
A mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by a person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic, from goods not certified, will be registrable as a certification mark in Part A or Part B of the register. A certification mark in respect of services is registrable in Part A of the register.

Registration of a series of marks:
Where a person claims to be the owner of several trade marks in respect of the same goods or services, and the trade marks resemble each other but differ in regard to statements of the goods or services, or statements of number, price, quality or place names or in regard to other non-distinctive matter, or as regards colour, the trade marks may be registered as a series in one registration.

Classification:
While neither the Act nor the Rules specifically refer to classification, the International Classification of Goods and Services (Nice Classification) is applied. The goods (which correspond with the class headings of the Nice Classification) are set out in a schedule to the Rules. A single application may cover only one class.

Convention priority:
While Uganda is a member of the Paris Convention, the Act does not make provision for the claiming of priority. However, the Registry appears to accept priority applications.

Application:
An application is filed with the Uganda Registration Services Bureau (URSB), headed by the Registrar General and operating under the supervision of the Ministry of Justice and Constitutional Affairs.
The following information and documents are required:
Full particulars of the applicant
Power of attorney (simply signed), to be submitted with the application
List of the goods or services for which registration is sought
The trade mark, with a print of the mark if it is not a standard word mark.

Examination/procedure:
An application is examined as to formal and substantive requirements. If the application is accepted either with or without conditions, the application is published in the Gazette. If no opposition is filed within a period of 60 days, the registration certificate will be issued.

Opposition:
The Act makes provision for opposition within 60 days from publication of the acceptance. The opposition must be made in writing in the prescribed manner, and set out the grounds of opposition.

The copy of the opposition must be sent to the applicant, who must respond by lodging a counter-statement in the prescribed manner, setting out the grounds on which he relies for his application. If he does not send a counter-statement, he will be deemed to have abandoned his application. The Rules make provision for further evidence to be lodged.

After all evidence has been lodged, the Registrar will hear argument from both parties and thereafter make a decision as to whether registration will be permitted. Any party may appeal to the court against this decision.

Duration and renewal:
A trade mark registration is effective for an initial period of seven years from the filing date of the application, and is thereafter renewable for consecutive periods of 10 years. Renewal must take place within the three months before, or within one month after, expiry of the preceding term. If the renewal fee is not paid within a month after expiry, the mark will be removed from the register. It may, however, be restored upon application in the prescribed form and upon payment of a renewal and restoration fee.

Use requirement and cancellation:
A registered trade mark is vulnerable to cancellation if it has not been used for a continuous period of three years.

Rights conferred by registration:
The registration of a trade mark in Part A of the register gives the owner the exclusive right to the use of the trade mark in relation to the relevant goods or services. The owner also gets the right to institute court proceedings against any person who infringes this exclusive right.

The registration of a trade mark in Part B of the register gives the owner similar exclusive rights, except that the owner will not be entitled to an injunction (interdict) in certain circumstances.

Common law rights:
From an enforcement perspective, Uganda is a former British Colony and, as such, it recognises 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 recognised 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.

Patents & Industrial Designs 

Law:
Industrial Property Act 2014
Industrial Property Regulations 2014


Patent & Industrial Designs protection:
Patent & Industrial Design protection is available via a national filing or via an ARIPO application designating Uganda. Uganda has implemented the Harare Protocol (which regulates patent filings in ARIPO) in its national law, thereby giving valid patent protection to applicants seeking to obtain a patent via an ARIPO application.

Uganda has also implemented in its national law, the necessary provisions to recognise international applications under the PCT and designating Uganda, and to deal with national phase PCT applications in Uganda. Therefore, Uganda can be designated in PCT international applications, and PCT national phase applications can be filed and processed in Uganda.

Patentable subject matter:
Inventions are patentable if they are new, involve an inventive step and are industrially applicable. An invention is new if it is not anticipated by prior art.

The following, even if they are inventions, are not patentable:
Discoveries and scientific and mathematical theories
Plant or animal varieties or essentially biological processes for the production of plants or animals, other than biological (sic; Microbiological intended) processes and the products of such processes
Schemes, rules or methods for doing business, performing purely mental acts or playing games
Methods for treatment of the human or animal body by surgery or therapy as well as diagnostic methods (this restriction shall not apply to products for use in any of these methods)
Mere presentation of information.

Types of applications:
Application for a patent may be made by way of :-
a non-convention application, where the effective date is the filing date of the application
a convention application, where the effective date would be the priority date of the first-filed application under the Paris Convention
a national phase application based on an international application under the PCT in which Uganda is designated
an ARIPO application designating Uganda
a divisional application, where the original application covers more than one invention
a utility certificate application, which (before refusal or grant) may be converted to a patent application.

Application:
Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents. Applications in terms of the Harare Protocol (ie ARIPO applications) can either be filed via the Uganda patent office, in which case they must be transmitted to the ARIPO office for processing. Alternatively, they can be filed at the ARIPO office in Harare. For more information on ARIPO, please refer to the chapter on ARIPO. Foreign applicants must have a local address for service.

Filing requirements:
full particulars of the applicant
power of attorney (simply signed)
assignment from the inventor, or a statement by the applicant justifying his right to the invention (simply signed)
specification (including claims, drawings and abstract), in English
certified copy of the priority document (if applicable).

Failure to file the priority document within three months from the filing date will lead to the loss of the priority claim.

Novelty:
Absolute novelty is required. An invention is new if it is not anticipated by prior art. Prior art is considered to include everything made available to the public anywhere in the world, by means of written disclosure, including drawings and illustrations, or by oral disclosure, use, exhibition or non-written means.

Convention priority:
An applicant who has filed a patent application in a convention country is entitled to claim priority from such earlier application, provided the application in Uganda is filed within 12 months from the earlier application.

Examination/procedure:

A Uganda application is subjected to formal examination, which takes place automatically. The Registrar may request the applicant to furnish details of corresponding applications in other countries, and may further request that copies of the search report, granted patent, final rejection, etc be furnished. The Registrar may direct that substantive examination be conducted for particular applications according to the technical field of the invention. In that case, examination is carried out at the ARIPO Patent Office on behalf of the Uganda Registrar.

Duration and maintenance:

A patent has an initial term of 15 years, but may be extended by a further five year period on payment of renewal fees and proof that the invention is being worked in Uganda

Maintenance fees are calculated from the first anniversary of the filing date but become payable upon grant of a patent. Thereafter maintenance fees are due upon the anniversary of the filing date. A six months grace period is provided for payment of renewal fees, subject to payment of surcharges. If a renewal fee is not paid within this period, the patent lapses.

Amendments:

Amendments can be made prior to or even after grant, but any amendment may not go beyond the disclosure of the invention in the application as filed.

Marking:
No requirement.

Working:
A compulsory licence may be granted in cases of non-working.

Utility model patents:
The Act provides for the granting of utility certificates in respect of inventions which are new and industrially applicable. It is not necessary for the inventions to involve an inventive step. A utility certificate expires, without a possibility of renewal, at the end of the seventh year after the date of filing.

At any time before the grant or refusal of a utility certificate, the application may be converted to a patent application. A patent application may likewise be converted to an application for a utility certificate.

You can read the rest of the the Africa IP Law Guide here