TRADEMARKS ACT.

ARRANGEMENT OF SECTIONS.

   Section

PART I
PRELIMINARY.

   1.   Interpretation.

   2.   Designation of Registrar-General.

PART II
REGISTRATION AND INFRINGEMENT.

The register.

   3.   Register of trademarks.

Effect of registration and the action for infringement.

   4.   No action for infringement of unregistered trademark.

   5.   Registration to be in respect of particular goods.

   6.   Right given by registration in Part A, and infringement of it.

   7.   Right given by registration in Part B, and infringement of it.

   8.   Infringement by breach of certain restrictions.

   9.   Saving for vested rights.

   10.   Saving for use of name, address or description of goods.

Registrability and validity of registration.

   11.   Distinctiveness requisite for registration in Part A.

   12.   Capability of distinguishing requisite for registration in Part B.

   13.   Prohibition of registration of deceptive, etc. matter.

   14.   Prohibition of registration of identical and resembling trademarks.

   15.   Registration in Part A to be conclusive as to validity after seven years.

   16.   Registration subject to disclaimer.

   17.   Words used as name or description of an article or substance.

   18.   Effect of limitation as to colour and absence of such limitation.

Procedure for, and duration of, registration.

   19.   Application for registration.

   20.   Opposition to registration.

   21.   Registration.

   22.   Duration and renewal of registration.

   23.   Registration of parts of trademarks and of trademarks as a series.

PART III
ASSIGNMENT AND TRANSMISSION.

   24.   Powers of, and restrictions on, assignment and transmission.

   25.   Certain trademarks to be associated so as to be assignable and transmissible as a whole only.

   26.   Power of registered proprietor to assign and give receipts.

   27.   Registration of assignments and transmissions.

PART IV
USE AND NONUSE.

   28.   Removal from register and imposition of limitations on ground of nonuse.

   29.   Defensive registration of well-known trademarks.

   30.   Registered users.

   31.   Proposed use of trademark by corporation to be constituted, etc.

   32.   Use of one of associated or substantially identical trademarks equivalent to use of another.

   33.   Use of trademark for export trade.

PART V
GENERAL.

Rectification and correction of the register.

   34.   General power to rectify entries in register.

   35.   Power to expunge or vary registration for breach of condition.

   36.   Correction of register.

   37.   Alteration of registered trademark.

   38.   Adaptation of entries in register to amended or substituted classification of goods.

Certification trademarks.

   39.   Certification trademarks.

Rules and fees.

   40.   Power of Minister to make rules.

   41.   Fees.

Powers and duties of Registrar-General.

   42.   Preliminary advice by Registrar-General as to distinctiveness.

   43.   Hearing before exercise of Registrar-General's discretion.

   44.   Power of Registrar-General to award costs.

Legal proceedings and appeals.

   45.   Registration to be prima facie evidence of validity.

   46.   Certificate of validity.

   47.   Costs of Registrar-General in proceedings before court.

   48.   Trade usage, etc. to be considered.

   49.   Registrar-General's appearance in proceedings involving rectification.

   50.   Court's power to review Registrar-General's decision.

   51.   Discretion of court in appeals.

   52.   Procedure in cases of option to apply to court or Registrar-General.

Evidence.

   53.   Mode of giving evidence.

   54.   Evidence of entries in register.

   55.   Evidence of things done by Registrar-General.

Offences and penalties.

   56.   Falsification of entries in register.

   57.   Fine for falsely representing a trademark as registered.

Miscellaneous.

   58.   Change of form of trade connection not to be deemed to cause deception.

   59.   Jointly owned trademarks.

   60.   Trusts and equities.

   61.   Recognition of agents.

   62.   Address for service.

      Schedule   Certification trademarks.

CHAPTER 217
THE TRADEMARKS ACT.

Commencement: 1 January, 1953.

   An Act relating to the registration of trademarks.

PART I
PRELIMINARY.

1.   Interpretation.

   (1) In this Act, unless the context otherwise requires—

   (a)   "assignment" means assignment by act of the parties concerned;

   (b)   "court" means the High Court;

   (c)   "limitations" means any limitations of the exclusive right to the use of a trademark given by the registration of a person as proprietor of the trademark, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place in Uganda, or as to use in relation to goods to be exported to any market outside Uganda;

   (d)   "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of them;

   (e)   "permitted use" has the meaning assigned to it by section 30(1);

   (f)   "prescribed" means, in relation to proceedings before the court, prescribed by rules of court, and, in other cases, prescribed by this Act or the rules;

   (g)   "register" means the register of trademarks kept under this Act;

   (h)   "registered trademark" means a trademark that is actually on the register;

   (i)   "registered user" means a person who is for the time being registered as such under section 30;

   (j)   "Registrar-General" means the Registrar-General of trademarks appointed under section 2;

   (k)   "surname" means and includes a name by which a person is customarily known by members of the community to which he or she belongs;

   (l)   "trademark" means, except in relation to a certification trademark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trademark, a mark registered or deemed to have been registered under section 39;

   (m)   "transmission" means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer not being assignment;

   (n)   "tribunal" means the court or, subject to section 52, the Registrar-General.

   (2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references in this Act to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods.

2.   Designation of Registrar-General.

   (1) Subject to any written law relating to the appointment of persons to the public service, the Minister shall designate a Registrar-General of trademarks.

   (2) The Registrar-General shall have a seal of such device as may be approved by the Minister; but until the seal has been obtained a stamp in such form as the Minister may approve shall be used in lieu of it.

   (3) Impressions of such seal or stamp shall be judicially noticed and admitted in evidence.

   (4) Any act or thing directed to be done by or to the Registrar-General may be done by or to any officer authorised by the Minister.

PART II
REGISTRATION AND INFRINGEMENT.

The register.

3.   Register of trademarks.

   (1) There shall be kept at the office of the Registrar-General for the purposes of this Act the record called the register of trademarks, in which shall be entered all registered trademarks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations and such other matters relating to registered trademarks as may be prescribed.

   (2) The register shall be divided into two parts called respectively Part A and Part B.

   (3) The register shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed.

   (4) The register shall be kept under the control and management of the Registrar-General.

Effect of registration and the action for infringement.

4.   No action for infringement of unregistered trademark.

   No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark, but nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect of those rights of action.

5.   Registration to be in respect of particular goods.

   A trademark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar-General, whose decision shall be final.

6.   Right given by registration in Part A, and infringement of it.

   (1) Subject to this section and sections 9 and 10, the registration (whether before or after the commencement of this Act), of a person in Part A of the register as proprietor of a trademark (other than a certification trademark) in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trademark in relation to those goods and, without prejudice to the generality of the foregoing provisions, that right shall be deemed to be infringed by any person, who, not being the proprietor of the trademark or a registered user of the trademark using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either—

   (a)   as being use as a trademark; or

   (b)   in a case in which the use is use upon the goods or in physical relation to them or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trademark or to goods with which that person is connected in the course of trade.

   (2) The right to the use of a trademark given by registration in Part A of the register shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of that mark in any mode, in relation to goods to be sold or otherwise traded-in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.

   (3) The right to the use of a trademark given by registration in Part A of the register shall not be deemed to be infringed by the use of that mark by any person—

   (a)   in relation to goods connected in the course of trade with the proprietor or a registered user of the trademark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trademark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trademark; or

   (b)   in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trademark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.

   (4) The use of a registered trademark, being one of two or more registered trademarks that are identical or nearly resemble each other, in exercise of the right to the use of that trademark given by registration in Part A of the register, shall not be deemed to be an infringement of the right so given to the use of any other of those trademarks.

7.   Right given by registration in Part B, and infringement of it.

   (1) Except as provided by subsection (2), the registration (whether before or after the commencement of this Act) of a person in Part B of the register as proprietor of a trademark in respect of any goods shall, if valid, give or be deemed to have given to that person the like right in relation to those goods as if the registration had been in Part A of the register, and section 6 shall have effect in like manner in relation to a trademark registered in Part B of the register as it has effect in relation to a trademark registered in Part A of the register.

   (2) In any action for infringement of the right to the use of a trademark given by registration in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 8, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the trademark.

8.   Infringement by breach of certain restrictions.

   (1) Where, by a contract in writing made with the proprietor or a registered user of a registered trademark, a purchaser or owner of goods enters into an obligation to the effect that he or she will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorises it to be done, in relation to the goods, in the course of trade or with a view to any dealing with the goods in the course of trade, shall be deemed by that act or authorisation to infringe the right to the use of the trademark given by the registration of the trademark, unless that person became the owner of the goods by purchase for money or money's worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner of the goods.

   (2) The acts to which this section applies are—

   (a)   the application of the trademark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, getup or packing;

   (b)   in a case in which the trademark is upon the goods, the alteration, part removal or part obliteration of the trademark;

   (c)   in a case in which the trademark is upon the goods, and there is also other matter upon the goods, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the trademark unless that other matter is wholly removed or obliterated;

   (d)   in a case in which the trademark is upon the goods, the application of any other trademark to the goods;

   (e)   in a case in which the trademark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the trademark.

   (3) In this section, references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trademark shall be construed, respectively, as references to the proprietor in whose name the trademark is registered, to a registered user who is registered, and to the registration of the trademark, in respect of those goods, and the expression "upon" includes in relation to any goods a reference to physical relation thereto.

9.   Saving for vested rights.

   Nothing in this Act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his or hers has continuously used that trademark from a date anterior—

   (a)   to the use of the first-mentioned trademark in relation to those goods by the proprietor or a predecessor in title of his or hers; or

   (b)   to the registration of the first-mentioned trademark in respect of those goods in the name of the proprietor or a predecessor in title of his or hers,

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trademark in respect of those goods under section 14(2).

10.   Saving for use of name, address or description of goods.

   No registration of a trademark shall interfere with—

   (a)   any bona fide use by a person of his or her own name or of the name of his or her place of business, or of the name, or of the name of the place of business, of any of his or her predecessors in business; or

   (b)   the use by any person of any bona fide description of the character or quality of his or her goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section 6(1)(b) or 39(3)(b).

Registrability and validity of registration.

11.   Distinctiveness requisite for registration in Part A.

   (1) In order for a trademark (other than a certification trademark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars—

   (a)   the name of a company, individual, or firm, represented in a special or particular manner;

   (b)   the signature of the applicant for registration or some predecessor in his or her business;

   (c)   an invented word or invented words;

   (d)   a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;

   (e)   any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in paragraphs (a), (b), (c) and (d) of this subsection, shall not be registrable under this paragraph except upon evidence of its distinctiveness.

   (2) For the purposes of this section, "distinctive" means adapted, in relation to the goods in respect of which a trademark is registered or proposed to be registered, to distinguish goods, with which the proprietor of the trademark is or may be connected in the course of trade, from goods in the case of which no such connection subsists, either generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

   (3) In determining whether a trademark is adapted to distinguish as provided in subsection (2), the court or the Registrar-General may have regard to the extent to which—

   (a)   the trademark is inherently adapted to distinguish as aforesaid; and

   (b)   by reason of the use of the trademark or of any other circumstances, the trademark is in fact adapted to distinguish as aforesaid.

12.   Capability of distinguishing requisite for registration in Part B.

   (1) In order for a trademark to be registrable in Part B of the register, it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods, with which the proprietor of the trademark is or may be connected in the course of trade, from goods in the case of which no such connection subsists, either generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

   (2) In determining whether a trademark is capable of distinguishing as provided in subsection (1), the court or the Registrar-General may have regard to the extent to which—

   (a)   the trademark is inherently capable of distinguishing as aforesaid; and

   (b)   by reason of the use of the trademark or of any other circumstances, the trademark is in fact capable of distinguishing as aforesaid.

   (3) A trademark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trademark or any part of the trademark.

13.   Prohibition of registration of deceptive, etc. matter.

   It shall not be lawful to register as a trademark or part of a trademark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

14.   Prohibition of registration of identical and resembling trademarks.

   (1) Subject to subsection (2), no trademark shall be registered in respect of any goods or description of goods that is identical with a trademark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trademark as to be likely to deceive or cause confusion.

   (2) In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar-G

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