MULTI-CLASS REGISTRATION OF TRADEMARKS
IN UGANDA: AN OVERVIEW
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In Uganda, a trademark means a sign or
mark or combination of signs or marks
capable of being represented
graphically and capable of
distinguishing goods or services of one
undertaking from those of another
undertaking. The function of a
trademark has always been to
distinguish the products of one
undertaking form those of another.
Under s. 2(2) of Uganda’s Trademarks
Act, 2010, the Registrar maintains a
manual and electronic register of
registered trademarks in Uganda.
The register is divided into parts i.e.;
Part A and Part B. A trademark may be
either inherently adapted to distinguish
or capable of distinguishing goods or
services of the proposed undertaking
from those of other undertakings and
this is the difference between the two
parts of the register and this is
determined by the character of the
mark at the time of application.
A mark needs to have graphical
representation for it to be protected in
Uganda.
Goods and services are classified by
URSB in accordance with the
International classification of goods and
services following their accepted
edition. Proof of use of a trademark in general course of business is not a
requirement to be proved at time of
application of a trademark in Uganda,
however, the Registrar has the
discretion to request an application to
adduce evidence of use to establish the
requisites for application. The
classifications are published by WIPO
that also provides the underlying
explanatory notes for each class which
guides the applicant on where their
mark may fall.
Uganda is a single class jurisdiction.
This means that a mark that desires
protection in Uganda needs to be
registered in each class that the
intended trademark proprietor desires
protection for example if a local
company like Nice House of Plastics or
a foreign company like Nike needs to
use one specific logo to protect
products that fall in different classes,
they will need to make applications in
all those classes. The advantage of this
is that the Registrar is made aware of
the class in which the mark is to be
protected and is able to distinguish
whether it is inherently distinctive for it
to be registered under Part A or
capable of distinguishing under Part B.
In addition, should the application
progress to the stage of advertising for
registration of the trademark, then any
oppositions to its registration may be
raised in respect to that particular
class.
Multi class registration means a mark
can be registered through a single
application that is covering goods
and/or services in multiple classes.
This is the case in jurisdictions such as
the USA although at the USPTO the
filing fee is charged for each class even
in a multi-class trademark application.
One of the benefits is that at the time
of renewal, should the trademark
owner renew a registration for one of
the classes or should it be updated
with new information, the validity of
the other registrations remains on the
register.
The advantage of a multi class
application is that in those jurisdictions
the Registrar only needs to receive one
application with the applicant’s details
such as names and addresses and only
one application is tracked. In addition,
there are filing costs that are saved on
the applicant’s end instead of making
separate applications in each class.
In case there is a conditional
acceptance, opposition, rejection or
any other counter by the Registrar or
a third party, it shall only apply to the
application as regards the contested
class. In addition, a multi class
application is important for a
trademark proprietor who carries out
trade in various goods and services
without commencing separate
applications in each class.
In sum, when making the decision to
file a trademark application in Uganda,
it is important to consider the class of
goods and services in which the
intended trademark proprietor intends
to carry out business and disclose the
same in their application. In case they
are not able to proceed with all the
separate applications for the desired
classes, then they should proceed
with the class in which the mark needs
imminent protection.