Amended trademark regulations come into force in Uganda
Uganda recently published its Trademarks (Amendment) Regulations no. 9 of 2021. The Amendment Regulations, which came into effect on 14 May 2021, has brought about some welcome changes to the provisions of the Trade Mark Regulations of 2012.
Classification of Goods/Services:
The Regulations of 2012 expressly provide that the 9th Edition of the International Classification of Goods/Services would be applicable in Uganda. The Amendment Regulations confirm that the current edition of the International Classification of Goods/Services under the Nice Agreement and of the International Classification of Figurative Elements of Marks under the Vienna Agreement are to be applied. The Amendment Regulations also make provision for the amendment of the International Classifications in the future, which are to be published by the Minister before they are implemented.
Accordingly, the 2021 version of the 11th Edition of the International Classification is applicable in Uganda.
This is a welcome change as it brings trade mark practices in Uganda up to International standards.
Publication of trade marks:
It was previously only possible to publish trade mark applications and related notices in the Official Gazette. The Amendment Regulations has changed this by providing for publication in the Gazette “or any other media as the registrar may direct”.
In line with the Direction on Publication of Trademarks signed by the Registrar of Trademarks on 11 May 2021, trade marks and related matter may be published in the Ugandan Registration Service Bureau (URSB) Journal. The URSB Journal is published online on a weekly basis and can be accessed here. The first Journal was published on 14 May 2021 and to date three Journals have been published.
It should be noted that the cost of publishing in the URSB Journal are not dependent on the length of the specification of goods/services, as was the case with Gazette publications.
Trade Mark Agent’s Register:
All trade mark agents are required to be registered with the Registrar, by making application on a statutory form and upon payment of a prescribed fee. The Registrar will keep a register of all trade mark agents, which will be available online. Registration will expire at the end of each year, with the possibility of renewal.
While the Agent’s Register is still a work in progress, we believe that it is a good initiative by the Ugandan Government to prevent fraudulent activity.
This address is now required to include an email address and telephone number.
Second renewal notice:
The Registrar will no longer issue a second notice to a proprietor concerning the expiry of a trade mark registration.
Extension of time:
This request must now be made on a statutory form (form TM 42A) and upon payment of a prescribed fee.
Trade mark search:
This request must now be made on a statutory form (form TM 27) and upon payment of the search fee. It is still a requirement to conduct a compulsory trade mark search prior to filing trade mark application in Uganda.
View this article in World Trademark Review here.
By Nazli Naidoo, Trademark Attorney