Uganda Patent Law
* Patents Act, Chapter 216 of 1993
* Patents (Amendment) Act of 2002
* Patent Regulations, 1993
* Uganda is a member of the Paris Convention, ARIPO (Harare Protocol), the PCT and the WTO/TRIPS.
Uganda has also implemented in its national law, by way of the Patents (Amendment) Act, 2002 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.
- Power of Attorney (POA) simply signed.
- Priority document should be filed within three months from the filing date will lead to the loss of the priority claim. (if apply)
Uganda Patent Registration Procedure
The Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents in the Uganda Registration Services Bureau (URSB).
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.
The Act does not provide for opposition to the grant of a patent by third parties.
After examination, if the Registrar is satisfied that the necessary requirements have been met, he shall grant the patent. Granted patents are published in the Gazette.
Applicant is notified on grant/refusal of a patent. The applicant is then requested to pay the grant fees and thereafter issued a Certificate of Grant of a patent.
From filing to registration is 2 years, approximately.
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.
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.
Utility certificates in Uganda
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.
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.
Uganda Trademark Law
The principal law governing Trademarks in Uganda is the Trademarks Act No. 17 of 2010. While Uganda is not a member of the Madrid Agreement and the Madrid Protocol (Madrid System) that makes it possible to protect a mark in large number of countries by obtaining international registration that has effect in each of the designated contracting parties, Uganda is a party to the Paris Convention for the Protection of Industrial Property 1883. Uganda is also a party to the TRIPS Agreement (Trade Related Aspects of Intellectual Property Rights which is not only the first comprehensive multilateral agreement on intellectual property but also the first international agreement that sets forth minimum standards of protection for several areas of intellectual property. Trademark protection is obtained by registration. Trademarks must therefore be registered locally to be protected.
* Uganda is a member of the ARIPO (Banjul Protocol), and the WTO.
For the purposes of trademark registration, the goods and services are classified according to the 9th edition of the International classification of goods and services under the Nice Agreement 1957. The classification was incorporated in the Trademarks Act No. 17 of 2017 in the 2nd Schedule thereof. A separate application is required for each class of goods.
Simply signed Power of Attorney (POA).
Uganda Trademark Registration Procedure
* The trademark 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 application is then examined by the Registrar to determine its inherent registrability and conflict with prior existing registrations and or applications.
* Where the application is accepted by the Registrar of Trademarks, the application is then advertised in the Uganda Gazette for a period of 60 days.
* If there is no objection after the expiration of 60 days of the advertisement, the Registrar shall upon payment of the prescribed fee by the applicant enter the trademark in the register and issue a certificate of registration.
* Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
National Opposition Period
Any person who has any ground of objection may, within 60 days from the date of publication of an application in the Gazette, give notice to the Registrar of the objection to the registration. The notice of objection must be in writing and must state the grounds of objection. The party seeking to oppose registration may apply for extension of time if by the time of such application the registration has not been completed.
The approximate time frame for completing the registration process of a trade mark in Uganda is about five (5) months. The process can be longer when the application for registration is being opposed.
The term of a trademark is 7 years from filing date and is renewable every ten years upon payment of the prescribed fee.
The application for renewal can be made at any time not more than three months before the expiration of the last registration of a trademark. After this, the non-payment of the mark is published in the Gazette. If within six months from the date of expiry of the trademark it is not renewed, a penalty for late renewal shall be paid. For renewal, it is not necessary to proof use of the trademark.
Note: Where registration of a trademark is not completed within twelve months (20) from the date of the application by reason of default on the part of the applicant, the registrar is enjoined to give notice in writing to the applicant or his authorized agent at his or her trade or business address of the non-completion. The registration is deemed to be abandoned if it is not completed within 14 days from the date when the notice was sent or after such further time as the Registrar may have allowed.
Opposition procedure in Uganda
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.
Uganda Grounds of opposition
An application may be opposed either on absolute or relative grounds. The grounds on which a mark may be opposed correspond with the
requirements for a mark to be registrable.
With respect to absolute grounds for registration, a mark may be opposed if it does not meet the requirements set out in the Act that the mark must be distinctive, if the mark is proposed to be registered in Part A of the Register.
A mark that is proposed to be registered in Part B of the register may be opposed if it does not meet the requirements in terms of the Act, including that the mark must be capable of distinguishing.
A mark may also be opposed on relative grounds, including that it is confusingly similar to an earlier registered trade mark. A trade mark relating to goods or services shall not be registered in respect of a description of goods or services, if the mark is identical with or nearly resembles a trade mark belonging to a different owner and already on the register in respect of:
* the same goods or services
* the same description of goods or services
* goods or services which are associated with those goods or services of the same description.
Other relative grounds on which a mark may be opposed in terms of the Act is if the registration of the mark would be likely to cause confusion or deception (due to the user rights of the opponent) or will be contrary to law or morality.
Cancellation for removal of a trade mark for non-use in Uganda
A registered trade mark may be removed from the register in respect of goods or services in respect of which it is registered, on application to the court or the Registrar of Trade Marks on the grounds that:
* the trade mark was registered without a bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any owner up to the date one month before the date of the application for cancellation.
* at least one month prior to the date of the application, a continuous period of three years or more elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use in relation to those goods or services by any owner.
Cancellation may be refused if it is shown that there has in fact been bona fide use in relation to goods or services of the same description, or that the non-use was due to special circumstances in the trade and not to an intention not to use or to abandon the mark. Defensive registrations may not be removed due to non-use.
Cancellation for removal of a trade mark on other grounds in Uganda
In addition to the cancellation/removal of a mark on the ground of non-use as set out above, a trade mark may also be removed on other grounds:
* an aggrieved person may apply, within seven years of the registration of a mark, for the cancellation of the mark if it is proved that a trade mark identical to or nearly resembling the registered mark was registered in another country in respect of the same or similar goods or services, and the goods originate from such other country
* an aggrieved person may apply for the removal of a defensive trade mark registration on the ground that the requirements for such defensive registration are no longer satisfied
* a person aggrieved by an omission, entry, error, defect or an entry wrongly remaining on the register, may apply in the prescribed manner to the court or to the Registrar, and the court or the Registrar may make an order for making, expunging or varying the entry as the court or the Registrar may think fit.
After registration there is, therefore, provision for an aggrieved person to seek the removal of a registered trade mark from the register on the ground that the mark should not have proceeded to registration due to any of the absolute or relative impediments to registration, or that it has since the date of registration become generic or has become an entry that is, for whatever other reason, wrongly remaining on the register.
Use requirement in Uganda
A registered trade mark is vulnerable to cancellation if it has not been used for a continuous period of three years.
A proprietor cannot rely on the permitted use by a third party, unless the user is recorded as a registered user.