HOW DO I HAVE A TRADEMARK RECOGNISED AND PROTECTED IN ONE OR SEVERAL AFRICAN STATES

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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. Read the rest of this entry »

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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 the rest of this entry »

DOES UGANDA RECOGNISE AND ENFORCE TRADEMARKS FROM COUNTRY OF ORIGIN?

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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. Read the rest of this entry »