Trademarks Act, 2010

This section provides definitions of terms (for example: “assignment”, “board”, “certification mark”, “court”, “currency point”, “limitation”, “Minister”, “passing off”, “permitted use”, “register”, “registered trademark”, “registrar”, “sign or mark”, “surname”, “trademark”, and “transmission”) to be used in the Act.

The registrar must keep a manual register of trademarks in the office, may keep an electronic register under prescribed safeguards, must record specified particulars and divide the register into Part A and Part B, and the registrar controls the register.

A person who applies for a certified copy or extract from the register is entitled to obtain it in documentary form or otherwise upon payment of a prescribed fee.

The registrar or court may consider the extent to which a trademark can distinguish goods or services when determining capability of distinguishing for Part B registration.

The registrar may publish an application before acceptance in specified cases; if an application is accepted the registrar must publish it for 60 days and may republish it but is not obliged to do so.

Allows a person to object to a registration within the prescribed time by giving written notice stating grounds; prescribes steps for registrar, applicant, hearings, appeals to court, restrictions on new grounds on appeal, withdrawal without costs in some cases, possible requirement for security for costs, and that the court may permit registration with modifications.

Marks adapted to distinguish goods or services certified by a person shall be registrable as certification marks in that person's name, but a person who trades in the certified goods or is connected with the provision of certified services may not register such a mark in their name.

An applicant (the person proposed to be registered as owner) must apply in writing in the prescribed manner and send draft regulations; the registrar must consider the application and may refuse or accept and approve regulations, subject to giving the applicant a hearing unless accepted without modification.

The registrar must publish accepted certification-mark applications and, when objections arise, decide after hearing parties whether registration is permitted, following specified considerations.

When a trademark registration is completed, the registrar must issue the applicant a prescribed certificate; if registration is not completed within twelve months due to applicant default, the registrar may, after written notice, treat the application as abandoned unless completed within the notice period.

The court may order expunging or varying a certification-mark register entry or deposited regulations on application and specified grounds; the registrar may publish and alter deposited rules and must give parties a hearing if objections are timely and must rectify the register to give effect to court orders.

After seven years from the date of a trademark's registration in Part A, the original Part A registration is to be taken as valid in all respects unless it was obtained by fraud or the trademark contravenes section 23(1); subsection (1) does not apply to trademarks registered under Part B.

The registrar or the court may require the trademark owner, as a condition of entry or continued registration, to disclaim any exclusive rights in non‑distinctive parts or to make another disclaimer necessary to define the owner's rights.

Defines when two or more persons are regarded as jointly owning a trademark: when none may use the mark except on behalf of all, or in relation to an article with which they are connected in trade; and states that the Act does not authorise registration of persons who use a mark independently as joint owners.

The registrar must renew a trademark registration on application by the registered owner in the prescribed manner and period, and renewal is subject to payment of a prescribed fee.

Before an initial trademark registration expires, the registrar must notify the registered owner of the expiration date and renewal conditions; if renewal conditions are not met by expiry, the registrar may remove the trademark from the register subject to prescribed restoration conditions.

The registrar must not register as a trademark any matter whose use would likely deceive or would be contrary to law, morality or be scandalous.

Registration of a trademark does not prevent a person from bona fide using their own name or business-place name, or bona fide descriptions of the character or quality of their goods or services (subject to references to sections 36(2)(b) and 37(2)(b)).

Trademarks that are identical with or nearly resemble an already-registered trademark of a different owner must not be registered for the same or associated goods or services.

The registrar or the court may require the trademark owner, as a condition of registration or continued registration, to disclaim exclusive rights (or make another necessary disclaimer); such a disclaimer generally does not affect the owner's rights except where it arises from the registration concerned.

The registrar or court may allow more than one owner to be registered for the same or associated goods or services in cases of honest concurrent use or other special circumstances, subject to imposed conditions and limitations.

Subsection (1) does not apply if the registrar or the court is satisfied that either there was no bona fide trade use of the removed trademark in the two years before removal, or that no deception/confusion would likely arise from its prior use; the provision also addresses status after removal for non-payment in relation to a one-year period.

The registrar may, on application by the registered owner and if satisfied there would be no likelihood of deception or confusion, dissolve the association between associated trademarks and amend the register; a person aggrieved by the registrar's decision may appeal to the court.

The registrar may dissolve an association of registered trademarks and amend the register after an application by the registered owner if there is no likelihood of deception or confusion; a person aggrieved by the registrar's decision shall appeal to the court.

Rules on assignment, licensing and transmission of trademarks relating to goods or services, including requirements for assignees to apply for directions and advertise assignments and that owners may licence others.

Associated trademarks must be assigned and transmitted only as a whole and not separately.

When someone becomes entitled to a registered trademark by assignment or transmission they must apply to the registrar, and the registrar must register them on receipt of the application and satisfactory proof of title; an aggrieved person may appeal to court.

A sign must be able to distinguish goods or services and be graphically representable to be registered as a trademark; if not inherently distinctive, distinctiveness must be acquired through use.

A person intending to apply to register a trademark must carry out a search to check whether the trademark exists in the register and must pay a prescribed fee.

Prospective trademark applicants may request the registrar's advice on whether a proposed trademark is capable of distinguishing goods or services, and the registrar must give that advice; applicants seeking such advice must apply in the prescribed manner.

Applicants must apply in writing in the prescribed form; the registrar may refuse or accept applications (with conditions), must state grounds for refusal/conditional acceptance in writing, and aggrieved persons may appeal to court; applicants may withdraw or correct/amend applications in certain circumstances.

A trademark relating to goods or services must be registered in respect of particular goods or classes of goods.

For registration in Part A a trademark must contain or consist of at least one of the listed essential particulars; the registrar or the court may have regard to specified factors when deciding distinctiveness.

A person may not bring proceedings to prevent or to recover damages for an unregistered trademark.

The Act does not affect a right of action against a person for passing off goods or services as those of another, nor the remedies for that right.

Registration in Part A gives the registrant the exclusive right to use the trademark in relation to the registered goods.

Registration as owner (Part A) of a trademark (other than a certification mark) gives the registrant the exclusive right to use the trademark for the registered services; use by a person who is not the owner (or authorised by the owner) in connection with those services or similar services that is likely to cause confusion is an infringement.

The court must not grant an injunction or other relief to a plaintiff for infringement of a Part B registered trademark if the defendant proves to the court's satisfaction specified facts (including that Part B registration confers rights like Part A, and that the complained use is unlikely to deceive or indicate a connection).

Registration in Part B confers on the registrant similar rights in relation to services as registration in Part A; however, a court shall not grant an injunction or other relief to the plaintiff if the defendant proves the complained-about use is unlikely to deceive or to indicate a business connection.

If a purchaser or owner of goods or services, having notice of a written contractual obligation with the trademark owner or permitted user, agrees not to perform certain acts in relation to those goods or services, they must not do those acts in the course of trade.

Owners or registered users of a registered trademark may not interfere with or restrain a person's use of an identical or nearly resembling trademark where that person (or predecessor) has continuously used it from a date earlier than the owner's use or the owner's registration, or object when that use is proved under section 27.

The registrar or a court may require a trademark owner to disclaim exclusive rights to words used as the name or description of an article or substance; such a disclaimer does not affect other rights except those disclaimed.

The registrar or the court may require a trademark owner to disclaim exclusive rights to a word used as the name or description of an activity when deciding whether the trademark should remain on the register.

Subject to subsection (3), the registrar may refuse to register a trademark (for goods or services) if the person opposing the application proves the mark is identical with or nearly resembles a trademark already registered in the country or place of origin, except where the applicant proves prior continuous use in Uganda or the objector fails to give an undertaking to apply for registration in Uganda within three months; protection is conditional on reciprocal treatment by the country of origin.

The court may remove a registered trademark on written application by an aggrieved person made within seven years if the court is satisfied the mark is identical or nearly resembles an earlier-registered mark in the country of origin, subject to specified exceptions and reciprocal treatment.

A plaintiff in an action for infringement may obtain relief such as damages, injunctions or account of profits in addition to any criminal punishment; the court may make orders to enable evidence, restrain defendants from removing or wasting assets, and may order forfeiture of infringing materials.

The Board must designate inspectors and issue them written certificates; the registrar may authorise registry members or police officers to act as inspectors; inspectors hold office subject to conditions the Board sets with Ministerial approval.

An inspector may enter any premises, ship, aircraft or vehicle at any reasonable time, on production of their certificate of authority, to ascertain contraventions of the Act.

Inspectors may inspect premises and seize suspected infringing articles for the purpose of ascertaining contraventions; if an inspector seizes an item they must notify in writing the person from whom it was seized; persons must not obstruct or refuse assistance to inspectors or give false statements.

Inspectors and public officers are not personally liable for acts done in good faith in the course of their employment or in executing (or purportedly executing) any duty under the Act.

Trademark owners or registered users who reasonably suspect imported goods infringe their trademark may apply in writing to a competent court or authority to have customs suspend release into free circulation; applicants who apply must provide adequate evidence and a detailed description of the goods, and the court or competent authority must inform the applicant within a reasonable period whether the application is accepted and, where determined, the period of suspension.

Fees shall be paid as may be prescribed by the Minister.

Allows an aggrieved person to apply to the court or registrar to rectify register entries; grants the court and registrar powers to order changes and to decide related questions; requires the court to direct service of notice and the registrar to rectify on receipt of notice.

The court or the registrar may order that a trademark registration be expunged or varied if, on application and subject to section 64, there has been a contravention of or failure to observe a condition entered on the register.

The registrar may, on prescribed request by the registered owner or by a registered user, correct or change registered details of a trademark, cancel entries, strike out goods or services, or enter disclaimers; a person aggrieved may appeal to the court.

The registered owner may apply to the registrar to add to or alter a registered trademark in a way that does not substantially affect its identity; the registrar may refuse or grant the application, advertise applications, require hearings when objections are made, and decisions can be appealed to the court.

The Minister may make regulations to enable the registrar to amend the trademarks register to adapt classifications; the registrar must not add goods/services or ante-date registrations except in limited cases where undue complexity would result and no substantial prejudice would occur.

An act connected to a trademark may be done by or to an agent of the person, if authorised and in accordance with the regulations.

If an applicant for trademark registration or their agent does not reside or carry on business in Uganda, they must give the registrar an address for service in Uganda.

Regulations made under section 97 may set the registry closing hour for transactions and may designate excluded days.

If the last day for leaving a document with, or paying a fee to, the registrar falls on a Sunday or a public holiday, it is lawful to leave the document or pay the fee on the next day following that Sunday or public holiday (including when consecutive holidays occur).

The Minister has the power to make regulations to implement this Act, including prescribing required matters, classifying goods, making duplicates, regulating publication and the registrar's business, and prescribing penalties.

The Minister may amend the schedule to the Act with cabinet approval by statutory instrument.

The Trademarks Act and Chapter 37 of the Penal Code Act, Cap. 120 are repealed, and existing orders, rules, regulations, fees, certificates, notices, decisions, determinations, directions, approvals, applications and things made under the repealed Trademarks Act that are in force at commencement continue in force and operate as if made under the corresponding provision of this Act; documents referring to repealed enactments are to be read as referring to the corresponding provision of this Act; original trademark registrations immediately before commencement are not invalidated; and trademarks on the register at commencement that were registrable under the repealed Act shall not be removed for not having been registrable under the earlier Act.

A registered trademark may be removed from the register on application by an aggrieved person for specific grounds of non-use, subject to exceptions (including certain permitted registrations and special circumstances); the registrar may refuse an application in some cases, and use by another person can count as use subject to the owner's control.

Owners of well-known trademarks may register defensive trademarks for other goods or services; the registrar must consider specified circumstances when assessing whether a mark is exceptionally well known.

The registrar may cancel a defensive trademark registration at any time where the trademark is no longer registered by the same owner otherwise than as a defensive trademark.

Sets rules for registering permitted users of a trademark, application requirements, registrar powers, permitted users' rights to use the mark and to pursue infringement if the owner does not.

The registrar may cancel or vary a person's registration as a registered user, on applications in the prescribed manner by specified applicants or where specified grounds exist, and may cancel at any time where the trademark is no longer registered for the goods or services.

The registrar must notify other registered users when someone is registered as a registered user, must give notice of an application under section 54 to the registered owner and registered users (except the applicant), and must give the applicant and notified/intervening persons an opportunity to be heard.

A person aggrieved by the registrar's decision under sections 50 and 51 may appeal to the court.

An application for trademark registration must not be refused or permission withheld solely because the applicant does not yet use the mark if the applicant intends to assign it to a body corporate or to a soon-to-be registered user; the court or registrar may require security for costs and may treat an application as abandoned for failure to give security, and the registrar must amend the register if registration ceases after prescribed periods (including a further period not exceeding six months).

The court or the registrar may accept use of an associated or only slightly altered registered trademark as equivalent to the registered trademark whose use must be proved.

Applying a trademark in Uganda to goods or services for export (or any other act in Uganda in relation to goods or services to be exported) is treated as use of the trademark in relation to those goods or services for any purpose for which use is material under this Act.

The use of a registered trademark shall not be taken to be likely to cause deception or confusion solely because it is used in a different form of connection in trade or business between goods or services and a person or predecessor in title.

The registrar may award costs to any party in proceedings before the registrar and may direct how and which parties are to be paid; costs should be what the registrar considers reasonable.

In legal proceedings about a registered trademark, a person being registered as the owner is prima facie evidence that the original registration and subsequent assignments and transmissions are valid.

If a court decides in favour of a trademark owner on validity, the court may certify that decision; if certified, the owner who later obtains a final order in their favour shall have full legal costs unless the court later certifies they should not.

The registrar must admit evidence of trade usages and relevant trademarks or get‑up used by others in trademark proceedings concerning goods, trade names, services, or business names.

The registrar has the right to appear and be heard in proceedings seeking alteration or rectification of the register; the registrar must appear if the court directs, and unless the court directs otherwise may instead submit a signed or sealed statement to the court.

The court may review decisions of the registrar about rectification of the register, including applications under section 79.

If an applicant may choose court or registrar: when a related action is pending the applicant must apply to court; otherwise an application to the registrar may be referred to court or the registrar may decide the matter after hearing parties; a person aggrieved by the registrar's decision may appeal to court.

The court has discretion over the registrar's costs and the registrar must not be ordered to pay any party's costs.

A person aggrieved by the registrar's decision under this section may appeal to the court.

When hearing an appeal of a registrar's decision, the court may confirm, set aside or vary the registrar's decision, refer it back with directions, or make any other order it considers.

The Chief Justice may, in consultation with the Attorney General, make rules about practice and procedure for jurisdictions exercisable by the High Court and for appeals; those rules may apply civil procedure rules of the High Court, Court of Appeal or Supreme Court with specified modifications.

In proceedings before the registrar, the registrar may take oral evidence when he or she thinks fit, and where evidence is taken orally the registrar has the same powers as a magistrate to require attendance and administer oath.

A certified and sealed copy of a register entry must be admitted in evidence in all courts and proceedings; a person requiring such a certified copy is entitled to obtain it on payment of the prescribed fee.

A certificate signed by the registrar about an entry, matter or thing the registrar is authorised to make or do is prima facie evidence that the entry was made, of its contents, and that the matter or thing was done or not done.

Anyone who forges or counterfeits a trade mark with intent to defraud commits an offence and on conviction may be fined up to forty eight currency points or imprisoned for up to two years or both.

A person who makes, causes, or produces a false register entry or a writing purporting to be an entry knowing it to be false commits an offence and is liable on conviction to a fine up to one hundred currency points or imprisonment up to five years or both.

Section Falsely representing a trademark as registered Section A person who makes a representation— with respect to a mark not being a registered trademark , to the effect that it is a registered trademark ; in respect to a part of a

It is an offence for a person to falsify or unlawfully remove a registered trademark applied in trade; conviction may result in a fine not exceeding one hundred and twenty currency points or imprisonment not exceeding five years or both.

A person must not apply a registered trademark, or a substantially identical sign, to goods or in relation to goods or services in the course of trade without permission, required authority, or court/registrar direction.

Makes it an offence for a person to make, program, possess or dispose of specified items (dye, block, machine, instrument, programmed device, or representation of a registered trademark) when knowing or reckless that they are likely to be used to commit offences under sections 74 and 75.

It is an offence for a person to intentionally sell, expose for sale, possess for trade or manufacture, import for trade or manufacture, or export for trade or manufacture goods when they know or are reckless about falsified, removed, or falsely applied registered trademarks.

Importing into Uganda or exporting from Uganda goods bearing a false or otherwise contrary trade mark is prohibited; a person who contravenes commits an offence and may face a fine, imprisonment, or forfeiture of the goods.

Persons whose rights are threatened or infringed may bring court proceedings for an injunction; the court may order inspection or removal of infringing materials on an ex-parte application; injunctions do not prevent claims for damages; victims may claim damages against the infringer whether or not there is a prosecution.

If an offence is committed by a body corporate, every director and the secretary are treated as having committed it; similarly, if committed by a partnership or other non-corporate body, every partner or member is treated as having committed it. A person will not be treated as having committed the offence under subsection (1) if they prove to the court that another person committed it without their consent or connivance and that they exercised all due diligence to prevent it.