Uganda is located at the heart of sub-Saharan Africa and is bordered by South Sudan, Kenya, Tanzania, Rwanda and the Democratic Republic of Congo. Its location makes it a strategic base for trade and therefore very attractive for potential investors as an emerging market. However, companies interested in entering the Ugandan market should seek IP protection beforehand, as it is common for third-party distributors to take advantage of new businesses and register their trademarks in bad faith, resulting in the unlawful use of marks and the creation of counterfeit products.
International treaties and protocols
Since 2000 Uganda has been a member of the Banjul Protocol of the African Regional Intellectual Property Organisation (ARIPO), which means that trademarks can be filed regionally. However, Uganda has not ratified the Banjul Protocol. Therefore, it is not recommended to take this route over the national one, since it is uncertain whether marks that are filed in ARIPO designating Uganda will be enforced – and if they are, their effectiveness is highly questionable.
Further, Uganda has been a member of the Paris Convention since 1965 and the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights since 1995.
Trademarks in a nutshell
Chapter 3(4) of the Trademarks Act 17 (2010) defines ‘protectable subject matter’ as “a sign or combination of signs, capable of distinguishing goods or services of one undertaking from those of other undertakings”. Companies can register goods and service marks, as well as certification marks. Further, Uganda is a single-class application jurisdiction and entities must apply for a mark through an agent. However, applications may be refused if the applicant or the address for service is not based in Uganda. Hence, applicants should proceed with an authorised agent that the registrar can recognise.
Trademark registration requirements
There are not many strict formal requirements in Uganda. To file a trademark, an applicant must submit:
The Ugandan Registration Services Bureau (URSB) must conduct an official search to ascertain the availability of the trademark in the jurisdiction before filing. The application process consists of:
The period from filing to registration may take between 10 and 18 months. However, this depends on whether there is a backlog at the registry.
A trademark in Uganda is valid for an initial period of seven years from the filing date and consecutive periods of 10 years thereafter. Applicants need only submit a simply signed power of attorney to file a renewal. There is a continuous non-use period of three years from the granting date, after which the mark may be subject to cancellation.
During the lifespan of a trademark, it may be necessary to amend the initially filed registration, given that the applicant or its details may change, and it is crucial that the information provided is accurate. In addition, any unrecorded information before the registry is not enforceable against third parties. The following services are available in the country provided that the formal requirements are met:
Due to the covid-19 pandemic there has been a slight delay in the timeframes to conclude proceedings in general. However, the situation is expected to improve as the pandemic dies down.
This is a co-published article, which was originally published in the World Trademark Review (WTR).