KAMPALA INTERNATIONAL UNIVERSITY

SCHOOL OF LAW

NAME : MUWULYA BRUCE

REG. NO : 2023-08-21135

COURSE : LLM COMMERCIAL

COURSE UNIT: PATENTS AND TRADE SECRETS LAW

YEAR : ONE

SEMESTER : TWO

LECTURER : PROF HASSAN ISMAIL

TOPIC
CONCEPT OF TRADE MARKS IN INTELLECTUAL PROPERTY LAW IN UGANDA

1
ORIGIN AND JUSTIFICATION FOR TRADE MARKS

A trade mark is a feature in industrial and trade markets. It is used by manufacturers and traders
to identify their goods and distinguish them from the goods made or sold by others.

A trademark is a distinctive sign that identifies certain goods and services produced or provided
by an individual or a company from those of other enterprises1.

The trademark has to be distinctive, non-descriptive and not likely to cause confusion. The
trademark owner has the exclusive rights to prevent others from using the same or confusingly
similar mark.

Historically, during the Roman era pottery was embossed with marks such as dolphin. By the
end of the sixteenth century, shopkeepers erected signs to show their trade. Traders also used
cards with a name and address. Additionally, during the industrial revolution names and marks
were used in advertising. This was the precursor to the modern trademark system2.

Trademarks are a very valuable form of intellectual property since they are linked to the quality
and consumer expectations in a product or service. Some goods have become synonymous with
their trade name. Examples include Coca Cola, Nescafe Coffee, Cadbury Chocolate, shell, Total
among others.

The value of symbolism in marketing is illustrated by the Coca Cola mark describing a beverage
based on a formula for an “unexceptional syrup3. The symbolism is also reinforced by the shape
of a Coca Cola bottle, which though previously, was not recognized as a trademark4 but could
amount to passing off if used by other competitors.

Three characteristics of a trademark may be noted. First, it is used or intended to be used in

connection with certain goods or services. Consequently, a dormant trademark may be
challenged grounds of validity and revoked for lack of use.5 Second, the trademark must be
distinctive in some way which factor limits the scope of signs and symbols that can be used as a
trade mark. Third, the ownership of a trademark gives restricted monopoly in the mark because
the proprietor of the registered trademark has property right therein6. The right is limited to
classes of goods and services against which the trademark is registered and also by exceptions to
rights granted to proprietors7. The trade mark is legally protected through the system of
examination, publication and registration.8

1
Ursb.go.ug/intellectual-property/trademarks accessed on 22/2/2024
2
Bainbridge, Industrial Property (London, Longman, 5th Edition, 2002) p. 531.
3
Ibid p. 532
4
Re Coca Cola Co. [1986] 2 All E.R .274 and Trade Marks Act 2010 (Section 23 (5)
5
Bain bridge, supra n1, p. 532
6
Trade Marks Act, 2010, section 36 (1), 37(1), 38(1)
7
Trade Marks Act, 2010, section 8
8
Trade Marks Act, 2010, section 6, 11, 12, 16

2
Related to ownership or proprietorship, is the concept of passing off9. However, effectively this
is a common law version of the trademark law. Passing off in relation to goods is the use by a
person on his or her own goods of a mark or get up belonging to another person with the
intention of passing off the goods as being of that other person.

The claim for passing off is normally added to an action for infringement of a trademark incase
the registered trademark is held to be invalid. A get-up is the appearance of the goods or
packaging or the way the goods are generally displayed, advertised or sold.

Another, less used area of law is the trade libel or malicious falsehood where the trader falsely or
maliciously claims that the goods of another are not genuine.10

Meaning of a Trade mark

A trade mark is a sign or mark and is defined to include “any word, symbol, slogan, logo, sound,
smell, colour, brand label, name, signature, letter, numerical or any combination of them.11 A
trademark is a numerical or any combination of signs or marks capable of being represented
graphically and capable of distinguishing goods or services of one undertaking from those of
another.12

In Smith Kline & French Laboratories Ltd v Winthrop Group Ltd,13coloured capsules for drug
pellets were accepted for registration as a trademark.

With regard to containers, the position initially was that they were not registrable as a trademark.
Thus in Re Coca Cola14 an application was made to register the famous Coca Cola bottle as a
trade mark. The shape of the bottle had been protected as a design under the Patents and Designs
Act, 1907, but the registration expired in 1940. The House of Lords declined registration on the
ground that this raised the spectre of a total and perpetual monopoly in such containers. The
bottle was subsequently registered under the United Kingdom Trade Marks Act, 1994. The
position under the Ugandan law is that a trademark is not registrable “as a trademark relating to
the goods if it consists exclusively of (a) the shape that results from the nature of the goods
themselves; (b) the shape of goods that is necessary to obtain a technical result; or (c) the shape
that gives substantial value to the goods”

For purposes of registration of a trademark it is critical that the mark was used or intended to be
used15. Token use of a trademark is insufficient for this purpose.16

9
Trade Marks Act, 2010, section 35
10
Thomas V Williams (1880) 14 Ch. D. 864
11
Trade Marks Act 2010, Section 1
12
Trade Marks Act, 2010, section 4 (1)
13
[1976] R.P.C 511
14
[1986] 2 ALL ER. 274
15
Trade Marks Act, 2010, section 46 also Batchelors Snackpot Trade Mark [1995] R.P.C 555
16
Imperial Group Ltd v Philip Morris & Co. Ltd [1982] FSR 72

3
The use should be in relation to the goods or service.17 In Cheetah trademark 18 it was held that
the use on delivery notes and invoices was still use in the course of trade.

Justification for Registration of trademarks

Registration of trademarks gives the owner an exclusive right to use the registered mark on the
goods and/ or services for which it is registered.

The owner of a registered mark can sue for infringement of his registration if someone else uses
the same or a similar mark on the same or similar goods and /or services for which the mark is
registered.

Registration gives one’s business the ability to distinguish itself from other providers in the
market and prohibits others from capitalization on an enterprise’s marketing efforts and good
will.

Registration of Trademarks

A sign or combination thereof, capable of distinguishing goods or services and is capable of

graphical representation or is distinctive is registrable. Given these requirements the mark serves
as a guarantee of trade origin. Thus in Philips Electronics NV v Remington Consumer
Products Ltd.19 The claimant registered 2 drawings of its of its three headed shaver as a
trademark. It was held that the registration was invalid since the sign interalia, denoted a function
rather than trade origin. It was stated that the trademark must act as an indicator of indicator of
origin denoting from whom the goods or services are and this is fundamental to trademark law.
In Canon Kabushiki Kaisha v Metro Goldwyn Meyer20 it was stated that the essential
function of the trademark is to guarantee the identity of the origin of the marked product to the
consumer or end user enabling him, without the possibility of confusion to distinguish the
product or service from others that have another origin.

Furthermore, in Jerryl Lynn Trade Mark21 a mark was registered in relation to medicinal and
pharmaceutical preparations and used for mumps vaccines. The name chosen was in honour of
Jerryl Lynn Hilleman from whom the original mumps vaccine was isolated by her father. It was
held that the mark was invalid as it was a name by which the virus had become known.

Meaning of “capable of distinguishing” which appears in various sections of the Trade Marks
Act in relation to the definition of a trademark and protectable subject matter and distinctiveness.
In Davis v Sussex Rubber Co.22 Sargant LJ explained that this means the mark is capable in time
of becoming distinctive with use or at least not incapable of becoming distinctive. It has also

17
Trade Marks Act, 2010, section 28 and 46 (a)
18
[1993] FSR 263
19
[1998] R. P. C. 283
20
[1999] FSR 332, para 28.
21
[1999] FSR 491
22
[1927] 44 R.P.C 168

4
been held that “capable of distinguishing within Section 1, 4, 9(2)23 even if it is so capable only
to a limited extent not incapable of distinguishing.

In 1-800 FLOWERS Inc. v Phonenames24 The Court of Appeal of England and Wales accepted
that alphanumeric marks were capable of distinguishing goods. However the application to
register 800-FLOWERS as a trade name since on the evidence the focus was on the mark as a
mnemonic for a telephone number rather than the applicant’s business.

Furthermore in Premier Luggage & Bags Ltd v Premier Co (UK) Ltd25, It was held that although
“Premier” was an ordinary laudatory word, it was not capable of distinguishing the claimant’s
cases and bags as it was not incapable of distinguishing them from those of other traders. Judicial
examples of signs held unregistrable because they are not capable of distinguishing since they
describe the article to which they are applied include “soap”, “banana”, “Bunsen Burner” and
“Wellington boot”. Marks for services which are unregistrable are “window cleaning”, “car
washing” and “legal advice”.

Music jingles, moving computer-generated images and perfumes may be registered. It is notable
that in principle sounds, computer images and smells are capable of geographical representation
by means of musical notation, computer data and written description. This is subject to the
limitation that a representation of the mark must be contained in the application to register.26

Another requirement is the advertisement in the Gazette for 60 days.27 This is to enable traders to
ascertain if the newly applied for marks are identical to or very similar to their marks or
otherwise unregistrable. They may then start opposition proceedings.

In Ty Want Spring Water Ltd’s Trade Mark Application, Geoffrey Hobbs, QC observed that28
The degree of precission with which the sign is represented must be sufficient to permit full and
effective implementation of the provisions of the Act relating to absolute unregistrability,29
relative unregistrability30, infringement31 and public inspection of the register32.

He added that there may be more than one way of representing the sign with the required degree
of precision and that with some signs, such as sounds or smells, graphical representation may be
acceptable even though “ interpretation or analysis may be required to detect or demonstrate use

23
Trade Marks Act, 2010
24
[2001] EWCA Civ 721; [2000] FSR 697; Bainbridge, p. 552
25
[2001] FSR 461.
26
Trade Marks Act, 2010, section 4(3), 7
27
Trade Marks Act, 2010, section 11
28
[2000] R.P.C. 55, 56.
29
Trade Marks Act, 2010, section 23
30
Trade Marks Act, 2010, section 25
31
Trade Marks Act, 2010, section 36(2), 37(2), 40
32
Trade Marks Act, 2010, section 5

5
of it”. However, it has been suggested that33 the amount of interpretation or analysis should be
minimal and easily undertaken to achieve predictable consistent results.

It is permissible to have regard to something outside the graphic representation in order to

understand the sign or mark and this does not detract from the representations. Some smell marks
have been registered. In John Lewis case34 Geoffrey Hobbs, QC explained that “the something
outside the graphic representation to smell, this could be described as smell of [for instance
cinnamon or lemon] as emitted by X where the nature and condition of X. However the future of
smell marks is uncertain with the UK as the only country in Europe accepting them. This has
casted doubt on the validity of those already registered such as floral fragrance/smell for example
smell of roses.

Three Dimensional Marks

There should be little difficulty with three-dimentional marks in terms of graphical

representation since what is involved is to represent the shape of an article by means of a
perspective view. Nevertheless, the mark must be clear and unambiguous. Thus in Triomed
(Priprietary) Ltd. V Beecham Group Plc35 a shape described as “shape and configuration of a
tablet substantially shown in the representation”. The South African High Court revoked the
shape mark on the grounds, firstly, that the registration extended beyond the actual
representation to a shape “substantially” as depicted. Secondly the mark was incapable of
distinguishing the goods of the proprietor from those of other traders.

In the UK, the Registrar has adopted guidelines as to when a sign is graphically represented for
purposes of the UK Trade Marks Act, 1994 thus:

a. The sign is defined with sufficient precision so that infringement rights can be
determined;
b. The graphical representation can stand in place of the trademark, without the need for
supporting samples, etc and
c. It is reasonably practicable for persons inspecting the register or reading the Trade marks
Journal to understand from the graphical representation what the trademark is.

Representation of Colours Graphically

In BP Amoco Plc v John Kelly Ltd36 it was held acceptable to represent colours graphically by
reference to Pantone Chart numbers or by heraldic shading. However the description should be
precise. An identifying mark by the word, “orange” was rejected as insufficiently precise since
there were many different shades ranging from light to dark orange and different tones from

33
Baibbridge p.553
34
John Lewis of Hungerford Ltd’s Trade Mark Application [2001] R.P.C 575, 592,
35
[2001] FSR 583
36
[2001] FSR 307; Cornish & Llewelyn, Intellectual Property; Patents, Copyright, Trade Marks and Allied Rights (Loondon: Sweet& Maxwell, 6th
Edition, 2007) paras 17-23, 18-03-20, 18-94

6
yellowish orange to reddish orange that could be covered by the generic name, “orange”37.
Simillary, a description of a blue bottle of certain thickness but including reference to
spectrophotometer readings was rejected as unsatisfactory representation since this required
readers of the representation to take additional steps to verify the actual identity of the the sign
submitted for registration using the equipment mentioned38

Attitude of the Public to a Trademark

The disadvantage with shape marks is that the public may not regard them as trademarks. This
may be because goods of a certain shape may be associated with a particular manufacturer
although it is the name of the manufacturer rather than the shape of the goods which is
recognized as being the trademark by the public. Thus in Interlego AG’s Trademark
Applications39 an application to register a brick as a trademark failed because there was no
evidence that the public recognized the bricks or raised knobs or tubes as trademarks.

Dual Protection

The Trade Marks Act40 appears to allow dual protection by registered designs and trademark and
exceptionally trademarks and patents. However, the Act has some control. Shape marks are not
registrable if the shape results from the nature of the goods, if the shape is necessary to obtain a
technical result and the shape gives substantial result and the shape gives substantial value to
goods41.

Unregistrable Signs

Registration under Part A of the Trademarks Act, 2010 should consist of atlest one of the
essential requirements outlined in section 9. These are:

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 of some predecessor in his/her
business;
c) An invented word or invented words;
d) Word or words with no direct reference to the character or quality of the goods or
services, and not being according to its ordinary signification, a geographical
name or surname; or any other distinctive mark.

With respect to the requirement of a distinctive mark or distinctiveness it is significant that the
expression “capable of distinguishing” is sometimes equated to distinctiveness. Thus in British

37
Orange Personal Communications Services Ltd’s Application [1998] ETMR 460
38
Ty Nant Spring Water Ltd’s TradeMark Application [2000] RPC 55, 59, Cornish, et al, supra
39
[1998] RPC 69
40
No.17 of 2010, Section 27
41
Section 23(5) Trademarks Act 2010

7
Sugar Plc v James Robertson & Sons Ltd42 it was held that “treat” did not acquire distinctiveness
since sixty percent of the public did not regard it as a trademark. In Phillips Electronics NV v
Remington Consumer Products Ltd43 it was suggested that the requirement of distinctiveness
prevents registration of a mark which is not wholly lacking in trademark content to be registrable
at all but which without evidenced of use, would not display a sufficient distinctiveness content.

There are basically two categories of grounds upon which registration would be refused. First,
are Absolute grounds and second, relative grounds. Absolute grounds relate to objection to
distinctiveness and certain public interest objections44.

Relative grounds arise because some other trader or proprietor has an earlier conflicting
interest45. The main difference between the two is that absolute grounds are not open to waiver
by anybody but relative grounds are.

(a) Absolute Grounds

There are three categories of trademarks to which to which absolute objection may be taken.
First, are those which are not distinctive.46 Second are trademarks which consist exclusively of
signs or indications which may serve in trade to designate the kind of quality, quantity, intended
purposes, value, geographical origin, and the time of product of the goods or services
(descriptive objection).47 Third are the trademarks which consist exclusively of signs or
indications which have become customary in the current language or in bonafide and established
practices of the trade.48 The concept of distinctiveness affects each of the above three categories.

Evidence of Acquired Distinctiveness

In Nestle v Mars49 the evidence of use was submitted in support of a claim for acquired
distinctiveness of the mark that, “Have Break” was a trademark for a Have a Break a Break …..
Have a Kit Kat.” It was held that distinctiveness may be acquired by an “essential” part of a
composite mark. Secondly, that it is for the court to assess whether or not that distinctiveness
has in fact been acquired on the basis of the following criteria:

a) The market share held by the mark;

b) How intensive, geographically widespread and long standing the use of the mark has
been;
c) The amount invested by the applicant in promoting the mark;

42
[1996] RPC 281; Cornish supra
43
[1999] RPC 809
44
Trademarks Act 2010, Section 4(1)(2),9,23
45
Trademarks Act 2010, Section 26 and 27
46
Trademarks Act 2010, Section 4(2), 9(1) (e),(2)
47
Trademarks Act 2010, Section 9(1)(d)
48
Trademarks Act 2010, Section26(1)
49
[2005] FSR 684

8
 d) The proportion of the relevant class of persons who because of the mark at issue identify
the goods as originating from a particular undertaking; and
e) Statements from chambers of commerce or other trade and professional associations.

In O2 v Hutchinson,50 it was observed that the issue to be identified is whether as a result of the
use of part of the composite whole, the relevant classes of persons actually perceive the product
or service designated exclusively by the mark applied for as originating from a given
undertaking.

In Scattered Sat 1 Satelliten Terhesen v OHIM51, Lord Parker observed that the right to register:

Largely depends on whether other traders are likely in the ordinary course of their business and
without any improper motive to desire to use the same mark or some mark nearly resembling it
upon or in connection with their own goods.

Furthermore, in Colorcoat TM Application52, Jacob, QC stated that the power of a trademark

monopoly should not be granted where it would require honest men to look for a defense to an
infringement action.

Indefeasible Objections

Certain marks may be so descriptive or geographical that they cannot be registered, even if
distinctive53. Thus in “York” TM,54the “York”TM was refused for freight containers. However,
under the Trade Mark Act, 1994 the issue of distinctiveness in such cases is left to the Registry
and Courts.

Case Law has in some cases refused to restrict the objection as to geographical origin to cases
where there is a real current or serious need to leave the mark free for use by others.55 Instead if
the relevant public in all the particular circumstances, would (or could later) take use of the name
to indicate the locality from which the goods come or in which they were conceived or designed,
the objection to registration must in principle arise. Thus the use of “Chiemesee” for clothing
was open to objection since Chiemsee is a large and well known lake in Bavaria (Germany).56
This principle was applied in Nordic Sauna Trademark57 where it was held that the registered
mark, “Nordic” for goods made of wool was not capable of distinguishing without proof of
acquired distinctiveness and upheld its removal from the register.

50
[2000] ETMR 677para 75
51
(1913) 30 R.P.C 511
52
[1990] R.P.C 511
53
Trademarks Act 2010, Section9(1)(d)
54
[1984] R.P.C 231 HL
55
British Sugar v James Robertson [1996] R.P.C 281,305; Windsurfing Chiemsee v Huber [1999] ETNR 210
56
Windsurfing Chiemsee case Ibid
57
[2002] ETMR 210

9
Additionally, a geographical word should also not mislead the public over where the goods or
services come from. Consequently, a company with no business in Switzerland could not,
therefore, register, “Swiss Miss” for its chocolate products.58

Concept of Distinctiveness

A distinctive mark is one which in relation to goods with which the trade mark owner “is or may
be connected in the course of trade from goods in the case of which no connection subsists”59.

With regard to a trademark relating to services, distinctiveness of the mark is adapted to

distinguish services with which the trademark owner is or may be connected in the course of
trade from services with the provision of which s/he is not connected60.

The issue of “capable of distinguishing” is resolved relative to the goods or services for which
registration is sought61. Conversely the expression, “devoid of distinctiveness” covers signs with
the potential to become trade marks but which need supporting evidence that they are known as
such. It also includes signs which are also surnames, image promoting words, letters, numerals
colours, smells, but may not apply to slogans62.

Surnames and Forenames

The use of names as trademarks is normally objected to63 except if represented in a special or
particular manner.64 In Misto Long Trade Mark Application65 it was held that surnames are
neither automatically eligible nor automatically ineligible for registration. The criterion for
distinctiveness of a name is whether it is capable of distinguishing. “Similarly, in Elvis Presley
Trademarks,66 the signature “Elvis Presley” was held to have little capacity to distinguish from
the manner in which it was written despite the ordinariness of the handwriting.

Consequently, when judging the application for a personal name or signature to be registered as
atrade mark , the basic issue is assess the likelihood of the public treating the mark and its use as
an indication of origin rather than merely a person’s name.67

Other Cases

There are other restrictions on registration relating to words, colour, smell, descriptiveness,
geographical origin, customary usage, public policy and morality, deception, illegality, non use
and shapes which are considered below

58
Swiss Miss Trade Mark [1998] R.P.C 889.
59
Trademarks Act 2010, Section 9(2)(a)
60
Trademarks Act 2010, Section 9(2) (b)
61
Trademarks Act 2010, Section 9(3)
62
Erpo Moebehwerk [2005] ETMR731 ECJ, para 36
63
Trademarks Act 2010, Section 9 (1) (a)
64
Ibid Section 9 (1) (a)
65
[1999] ETMR 906.
66
[1999] R.P.C 567 C.A
67
British sugar case supra

10
Words

There could be a situation where a motivated businessman may wish to use a mark or variation
of it, for instance, words which promote or advertise the image of a product. Examples are “ The
Perfectionists” for lady underwear, “Christmas Time” for Telecom devices or “Real People, Real
Solutions” and “Best Buy”.

In “Company Line” DKV v OHIM68, an appeal against CFI’s finding that coupling together of
words without graphic or semantic modification was not registrable. It was also observed that
words which are customary in English speaking countries did not confer on the sign a distinctive
character. Additionally, it was found that it was not wrong for CFI to refuse consideration of the
alternative objection under the descriptiveness head once it was decided that the sign was devoid
of distinctive character69.

The above reasoning also applies to letters and numerals70. In Scattered Sat 1n Satellion
Ternhesen v OHIM71, It was held that the mark must be considered as a whole. Additionally,
that although it was not unusual and lacked a high degree of inventiveness, this was not
sufficient to exclude distinctiveness which ultimately depends on the mark’s capacity to
distinguish the goods or services of one undertaking from those of others.

Colour

The registration of a single colour may cover a wide portion or spectrum (Red, Blue, etc) The
cases in the European Union show a variety of approaches. Thus in Colgate – Palmolive Co.’s
Trade Mark Applications72, the striping for tooth paste (sandwiches combining two other colours
with the white of toothpaste) was refused registration on the ground s that it was devoid of
distinctive character.

Additionally although the get-ups where novel in the market, it was not accepted that the
consumers would view them as indicative of origin. Instead they were regarded as “an
arrangement of the product itself, mere decoration or perhaps indicative of active ingredients in
toothpaste”. Furthermore, in KWH Saat v OHIM,73 it was held that the ability of colours per se
(on their own) to be distinctive is inconceivable save in exceptional circumstances. This may
happen when the goods or services are restricted and the relevant market is specific74. In this
respect, the public is less likely to view a colour as indicating origin than a word or figurative
mark. Thus in Heidelberger Banchenie75 It was held that for a colour to be registrable, the sign

68
[2003] ETMR. ECS.
69
ibid
70
Letter “K” Trade Mark [2001] ETMR 181
71
[2005] ETMR 20 ECJ
72
[2002] R.P.C 519.
73
[2005] ETMR 1016 ECJ
74
Green v Grey subnom Viking Umwelttecchnik [2003] ETMR 196
75
[2004] ETMR 1289, para. 33

11
must be “precise”, “unambiguous” and “durable” and where it is a combination of colours
must be systematically arranged in a predetermined and uniform way.

The practical consequences of judgements in this area is that significant evidence of use of a
colour as a trade mark is required.76 The statutory approach is that “ trade mark may be limited in
whole or part to one or more specified colours” and this will guide whether it is distinctive.

Smell Marks

A smell mark is only registrable on strong evidence of recognition as a trademark which can be
graphically represented77. It is also necessary to show that the public considers smell as an
indicator which distinguishes the source78. In Sickman case79 the requirement of graphic
representation was not satisfied by a chemical formula (C6H5-CH =CHCOOCH2)
accompanying a description which was written in words (balsamically fruity with a slight hint of
cinnamon), a deposit of odour sample or a combination of the above.

Descriptiveness

The Trade Mark Act 2010 provides for the registration of “word(s) having no direct reference to
the character or quality of the goods or services….” This means that descriptive words are not
registrable. Examples are references to the kind, quality, quantity or intended purpose or value of
a product or service. The following are examples where registration was refused on grounds of
descriptiveness. “Day by Day” on the ground that it might embarrass other traders in milk
products.80 “Bonus Gold” for financial services.81 “Automatic network exchange” for certain
business information.82 “Coffee Mix” for coffee and the like,83 “Foot Loops” for cereals,84
“Eurolamb” for the meat,85 “Pollypads” for saddles ecause of “pony”.86

In contrast, the abbreviation “E.S.B” (Extra Strong Beer) for beer was found only to be indirectly
descriptive and therefore well outside the Trade Mark Act87 Similary in Pocter & Gamble v
OHIM,88 it was held that “Baby-Dry” for babies’ nappies was distinctive because of lexical
intervention bestowing on its distinctive power”. However double mint Judgement89 the court
declined the registration of “double mint” for chewing gum because of the public interest that the

76
Duckham & Co’s Application [2004] R.P.C. 557.
77
Sickman [2003] ETMR 466 ECJ, para 72
78
Re Clarke 17 USPO (201) 1238 (1990): Fragrance of Plumeria blossoms for embroidery were registered.
79
supra
80
Besnier SA’s Trade Mark Application [2002] R.P.C 260
81
“Bonus Gold” Trade Mark [1998] R.P.C 859
82
Automatic Network Exchange [1998] R.P.C
83
Coffee Mix Trade Mark [1998] R.P.C 717
84
Foot Loops Trade Mark [1998] R.P.C 240
85
Eurolambs Trade Mark Application [1997]ETMR 420
86
Ponny McKinnon’s Application [1999] ETMR 234
87
1994 (UK), section 3(1)(c) equivalent to section 9(1)(d) of the Trade Marks Ac 2010 Uganda
88
[2002] R.P.C 369 EC
89
[2004] R.P.C 18 ECJ

12
descriptive terms may be freely used by all other traders. Apparently, this is so whether the use
by the other traders has already occurred or may occur in the future.90

Geographical Origin

Geographical origin has been partly discussed in relation to indefeasible objections.

Nevertheless, the following points may be noted in addition. Commercially, a valuable
association between a place and the type of goods and services may sometime be built up by the
use of a place name. The association may derive from the physical conditions for the production
of raw materials (such as grapes for wine), carrying but manufacturing process (such as
Roquefort Cheese) and an established tradition of local craftsmanship.

In this regard where traders share a name this may be protected through the registration of
certification or collection marks91.

With respect to the determination of a word to be “geographical”, one should consider the
presumed understanding of the average consumer of the goods or services in question who “is
deemed to be well informed and reasonably observant and circumspect”. Where geographical
usage is unknown, the word is regarded as invented. Additionally, fanciful uses of place, names,
have been permitted, for instance, “North Pole Bananas” and “Monte Rosa” cigarettes92.

The guideline on the use of geographical or descriptive name or appears from the Windsurfing
Chiemsee case93. First, where the geographical or descriptive term is well known as such, proof
of the trade mark use has to be long standing and intensive especially where the word has been
used to indicate the geographical origin of the goods in question. Secondly, the overall
assessment must take into account the promotion expenditure on the mark. The proportion of the
public who recognize it as distinctive, and statements from chambers of commerce and industry
and other trade and professional associations. Although it recognized the value of opinion poll
evidence the court declined to lay down numerical degrees of recognition as a test.

Customary Usage

The restriction of Registration as a trade mark extends to 2 situations; signs or indications which
have become customary first in the current language and secondly, in the bonafide and
established practices of the trade94.

Section 2495 provides that registration of a trademark does not affect the bonafide use by a
person of any description of the character or quality of his/ her goods or services provided this is
not confusing as to amount to infringement within section 36(2)(b) and 37(2)(b)96.

90
OHIM v Win Wigley Jr Co (“Double Mint”) [2004] R.P.C 18
91
Trademarks Act 2010 sections 13-15
92
Lloyd Schuhfabrik [1999] FSR 627. [1999] ETMR 690; Philips Electronics v Remington Consumer Products Ltd [2003] R.P.C 2 FCJ
93
[1999] ETMR 585 ECJ at paras 38-53.
94
Merz & Krell (Bravo) [2002] ETMR 231

13
Public Policy and Morality

It is provided that the registrar shall not register as a trademark or part thereof any matter the use
of which is likely to deceive or would be contrary to law, morality or any scandalous design97.

The objection on grounds of public policy or morality is occasionally made where it is evident
that the mark offends generally accepted mores of the time. In Phillips v Remington98, the
registration of “Baby Killer” as a trade mark for abortifacient was disallowed. Similarly, the
refusal to register “Jesus” for clothing and other goods was upheld on the basis that the use of it
as a trademark should be regarded as troubling in terms of public interest99. “FCUK” trademark
Application was disapproved100. Additionally in Ghazilian TM Application101, the court
confirmed the registry’s refusal to register “Tiny Penis” for clothing. S.Thorley QC, explained
that distaste on the part of a section of the public was insufficient. What was required was the
mark would offend the moral principles of right-thinking members of the public. The mark was
refused as likely to offend public decency.

Deception

Section 23(1)102 restricts the registration of a trademark which is likely to deceive. This
envisages the public confusing the source of the product or service. In Elizabeth Emmanuel103
the court explained that there needs to exist actual deceit or serious risk that consumers will be
deceived. Second, it was not sufficient it was not sufficient that a particular person was no longer
associated with the proprietor of the trademark comprising the person’s name.

In the Tanzanian case, Kiwi Europe Holdings BV v Sajad Ali Ltd. [2005] T.L.R, 434, a
representative of the plaintiff, the registered proprietor of the trade mark, “KIWI” bought from
the defendant’s shop, a KIWI shoe polish which turned out to be fake, although it had so many
features of one including the logo on it, but the year of its manufacture was missing and the
motto on it was slightly different from the genuine “KIWI”. The plaintiff sued the defendants for
infringement of the plaintiff’s registered mark. The High Court held that the cumulative effect of
sections 31 and 32 of the Trade and Service Marks Act, 1986 (Tanzania) is that the right to
exclusive use upon registration of a trade mark cannot be infringed unless it is proved that the
offending mark is either identical with the registered trademark or it so resembles the registered
trade mark as to be likely to deceive or cause confusion in relation to the goods in respect of
which the mark is regarded.

95
Trademarks Act 2010
96
Trademarks Act 2010
97
Trademarks Act 2010 Section 23(1)
98
[2001] ETMR 509
99
Basic Trade Mark SA’s TM Application [2005] R.P.C 611, para 26
100
French Connection v Sutton [2002] ETMR 341
101
[2002] R.P.C. 628
102
Trade Marks Act 2010
103
[2006] ETMR 750

14
Contrary to law

Section 23(1)104 restricts the registrar from registering trademarks that are contrary to law. An
example of the law likely to be contravened is the Anti-Counterfeiting Law. In the Ugandan case
of Tecno Telcom Ltd v Kigalo Investments Ltd [2013]2 EA 376, the High Court held that the
applicant (who applied to expunge the respondent’s mark from the register of trademarks) was an
aggrieved person under section 45 and 46 of the Trade marks Act 2010 as it was the registered
owner of Tecno trade mark in Hong Kong and it manufactured and dealt in Tecno phones prior
to the registration of the Tecno mark in Uganda by the respondent. The court further held that the
applicant had met all the conditions for removal of the trademark, Tecno from the register of
trademarks in Uganda. Additionally, the respondent’s acts amounted to counterfeiting and were
illegal as they contravened the provisions of the Trade Marks Act 2010.

Non-Use of a Trademark

Section 46105 provides that a registered trademark may be removed from the register for non-use.
In the Tecno Telcom case supra the High Court of Uganda held that the mark Tecno was
registered by the respondent without a bonafide intention to use the same and there had never
been any bonafide use of the mark since it was registered in 2008. The mark would thus be
removed from the register.

Shape

A sign shall not be registered as a trade mark relating to goods it consists exclusively of a shape
(i) that results from the nature of the goods; (ii) of goods that it is necessary to obtain a technical
result; and (iii) that gives substantial value to the goods106

TRADE MARK INFRINGEMENT, DEFENCES AND REMEDIES

Typically the infringement of a trademark occurs where a person “uses another’s registered mark
or some confusingly similar sign as a trade mark to indicate the source of goods or services”.107
If this is not prevented, the mark owner looses out and the consumers are not able to trust the
marks they see with the result that product differentiation becomes impossible. Consequently,
infringement is defined to prevent such harm and to protect the “origin” of trademarks.108

Infringement of a registered trademark

104
Trade Marks Act 2010
105
Trade Marks Act 2010
106
Trade Marks Act, 2010 Section 23(5)
107
Cornish & Liewelyn, Intellectual Property (London: Sweet &Maxwell, 6th Edition 2007), p.737, para 18-82.
108
ibid

15
The basis of infringement, which is actionable, is that the trademark must be registered.109 Where
the mark is not registered an action for passing off of goods or services is possible.

Effect of Registration of a Trademark relating to Goods in Part A of Register

The registration in Part A of the register of a mark related to the goods gives the owner the
exclusive right to use the trade mark in relation to the goods. This right is infringed if a person
other than the owner or permitted user uses a mark identical with or resembling it so as to cause
confusion in the course of trade relating to goods of the same description.

In Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo and others,110 the court observed
thus: In cases where trademark infringement is alleged infringement occurs when a suspected
infringer uses a mark for goods or services identical or closely related to those of the plaintiff.
The test for infringement is the likelihood of confusion. Likelihood of confusion is the
probability that a reasonable consumer in the relevant market will be confused or deceived, and
will believe the infringer’s goods or services come from, or are sponsored or endorsed by the
complainant or that the two are affiliated.

Nevertheless, the use of the trademark in Part A of the register is subject to conditions mentioned
on the register. Consequently, in determining infringement such limitations and conditions
should be considered.111 Additionally, there is no infringement if the trade mark is used in line
with the permitted use or implied consent of the owner or registered user.112 Similarly, there is no
infringement in relation to goods accessory to other goods where the trade mark has been used
without infringement and use is reasonably necessary in order to indicate that goods are adapted.
Finally, there is no infringement in relation to the trade mark being one of two or more registered
trademarks relating to goods identical or resembling each other pursuant to the right to use the
trade mark registered in Part A of the register.113

Effect of Registration of Trade Mark Related to Services in Part A of the Register.

Section 37(1)-(3) Trade Marks Act 2010 are identical to Section 36 (1)-(3) except that they relate
to services. Consequently, the discussion above relating to goods applies to those sub-sections.
There is no infringement of a certification mark issued under Part A of the register, first, if it
relates to services which the owner of the mark or registered user conforming to the permitted
use or indicating that the services are certified by the owner.

Second, there is no infringement related to services in the course of business with the owner or
registered user of the mark where they have expressly or impliedly consented to the use thereof.

109
Section 34, Trade marks Act 2010
110
HCCS No. 2006 (Uganda) also In Aktiebolaget Jonkoping-Vulcan v E.A. Match Co. Ltd [1964] EA 62, where the Uganda High Court held that
the two labels were different both as to their get-up and lay out generally and no ordinary person could be led to believe that the label was
similar to that of the plaintiff company whether placed side by side or not; accordingly there was no infringement of the plaintiff’s trade mark.
111
Section 36(3) Trade Marks Act 2010
112
Section 36(4)(b) Trade Marks Act 2010
113
Section 36(5) Trade Marks Act 2010

16
Third there is no infringement related to services available for use with other services in relation
to which the mark has been used without infringement if the use of the mark is necessary to
indicate that the services are available for that use.

Effect of Registration of Trade Mark Related to goods in Part B of the Register

The registration in Part B of the register confers on the owner a similar right to those goods as if
registered under Part A of the register. Consequently section 36114 applies115. However, there is
no infringement if the defendant shows that the use complained of is not deceptive or confusing
or the use is not indicative of ant connection in the course of the trade between the goods and the
owner or the registered user of the trademark.

Effect of Registration of Trade Mark related to services in Part B of the Register

The registration of the owner of a trade mark in Part B of the register for services gives him or
her the same right as registration under Part A116. however there is no infringement and
entitlement to an injunction by the plaintiff if the defendant shows that first, the use complained
of by the plaintiff is not deceptive or confusing117. Or secondly, the use of the trade mark is not
likely to indicate that the owner of the trade mark or registered user thereof is connected in the
course of business with the provision of services118.

Infringement through Breach of Restrictions

The breach by the purchaser or owner of goods or services of obligations agreed with the owner
or permitted user of a trade mark relating to the goods or services is also regulated by statute.
The breach of such obligation amounts to infringement119. This particularly applies if the owner
becomes owner of goods by purchase before receiving them.

The breach applies to the following situations. First, to an application of a trade mark on goods
or services after suffering an alteration in the manner specified in the contract120. Second, in
relation to the alteration, part removal or obliteration of a trademark on goods or services.121
Third, in relation to a trade mark on goods or services and there is also other matter indicating a
connection in the course of trade between the owner or registered user of a trade mark and goods
and services. In this case the removal or obliteration wholly or partly of the trademark except
where that other matter is wholly removed or obliterated amounts to a breach122. Fourth, in the
case in which the trade mark is on the goods or services123. Finally, in relation to a trade mark on

114
Trade Marks Act 2010
115
Section 38(1) Trade Marks Act 2010
116
Section 39 Trade Marks Act 2010
117
Section 39(2)(a) Trade Marks Act 2010
118
Section 39(2)(b)Trade Marks Act 2010
119
Section 40(1)(a) Trade Marks Act 2010
120
Section 40 (3)(a)Trade Marks Act 2010
121
Section 40 (3)(b)Trade Marks Act 2010
122
Section 40 (3)(c)Trade Marks Act 2010
123
Section 40 (3)(d)Trade Marks Act 2010

17
the goods where there is an addition to the goods or services of any matter in writing that is
likely to injure the reputation of the trade mark124.

Summary of the ingredients of infringement of a Trade Mark

The ingredients of infringement of a trade mark may be summarized under 4 heads. First, is use
of a trade mark without the consent of the proprietor of the trade mark, in the course of trade a
sign which is identical with or similar to the trade mark in relation to goods or services which are
not similar to those for which the trade mark is registered.

In O2 One Community Corp v Advance Magazine Publishers Inc125 it was explained that in
relation to the similarity between marks two issues should be considered. First, whether the
visual, oral and conceptual similarity between the allegedly infringing sign and the
registered trade mark is distinctive.

The second head is the use of the trademark in relation to those goods or services as would
indicate a connection between the goods or services and the proprietor.

The third head is the existence of a likelihood of confusion on the part of the public because of
such use126. It has also been suggested that127 in determining the likelihood to deceive or cause
confusion regard must be had to: the visual (look), phonetic (sound), class of goods or their
nature, surrounding circumstances and the likely result if each mark is used in the normal way as
a trade mark of the goods. This includes the distribution of goods, circulation of goods, volume
of sales, type of consumers and the degree of discrimination. Other factors to be considered
include reputation and goodwill, style, manner and methodology of trading and finally custom.

The above considerations have featured in some judicial cases. In E.A Industries Ltd v
Trufoods Ltd128 the court dealt with 2 bottles that were substantially similar in size and shape.
There were 2 readilt apparent differences which were evident when the bottles were compared
which would not be noticed by someone who looked at the bottles separately. The court
concluded that the bottles bore labels which were substantially similar in size and shape. The
design of the bottles was generally similar but there were differences of detail and they bore
names which in themselves were confusing.

In Brooke Bond (Kenya) Ltd v Chai Ltd129 the appellant sued the respondent for infringing its
trade marks and for passing off its goods as the appellant’s. The alleged infringement of the trade
marks consisted in using the words Green Label. The packets used by the respondent had been
changed to make them more nearly resemble those of the appellant. The trial judge held that
there was no property in general words and the packet differed when compared. Upon appeal, the
124
Section 40 (3)(e)Trade Marks Act 2010
125
[2010] 2 SLR 459.
126
Kiwi case supra
127
Kerly’s Law of Trade marks and Trade Names (London: Sweet & Maxwell, 13th Ed 2001)
128
[1972] EA 420
129
[1971] EA 10

18
Court of Appeal agreed with the trial judge that there can be no property in general words
descriptive of the goods. Second, that the test of comparison of marks side by side was not sound
since the purchaser seldom has the two marks before him since marks with many differences
may yet have an element of similarity which may cause deception. Thirdly that the labels are
changed to make them more nearly similar is not conclusive (of infringement) but was highly
relevant.

Fourth, judicial notice may be taken of the number of illiterate persons in Kenya and that this
fact should be borne in mind.

Spry, Ag. P. further stated that generally regard must be had to the nature of the goods and the
classes of people likely to buy them. The more sophisticated or extraordinary the goods, and
consequently the smaller the class of persons likely to buy them the smaller the danger of
deception. Such purchasers are likely to examine the goods with care and to be interested in
knowing who the manufacturer is. It is very different with everyday articles, such as cigarettes or
as in this case, packets of tea. These are bought by persons in every class of the society and they
are bought casually, without close scrutiny.

A similar approach which highlights the significance of the class of potential customers and
phonetic (sound) in relation to the registered mark is to be found in London Overseas Trading
Co. Ltd. V The Raleigh Cycle Co. Ltd130. An objection to register “Lale” trademark was up
held by the registrar as it phonetically sounded as “Raleigh” in pronunciation which was a
registered trademark.

Burden of Proof of infringement of a Trade Mark

Burden of proof of infringement of a trade mark is on the party alleging infringement131. Sir Udo
Udoma C.J stated thus:132 As general proposition of law, I think I am right in stating that the
burden of satisfying the court that there has been infringement of a trade mark is on the plaintiff
company to prove that there is resemblance between the 2 marks and such resemblance is
deceptive. It is also a well established principle of law that it is the duty of the judge to decide
whether the trade mark complained of so nearly resembles the registered trade mark as to be
likely to deceive or cause confusion in the minds of the public. From that duty the judge cannot
abdicate.

Defences

General defences

130
[1959] EA 1012 see also Re Application Bourjois Ltd [1964] EA 265 where it was held that the class of persons who would buy the perfumed
soap labeled “Soir de Paris” were sophisticated and there was no likelihood that they would be deceived into thinking that the goods were of
French origin.
131
Kiwi case supra also Cut Tobacco Ltd v British American Tobacco Ltd [2001] E.A. 24
132
Aktibolget case supra

19
The Trade Marks Act 2010 contains a number of limitations on and defences to the effects of a
trade mark. There are as well common law and equitable defences of delay and aquiescence and
lack of title to the trademark.

In most cases the defendant pleads based on lack of a likelihood of confusion or damage to the
reputation of the trademark. It is also common for the defendant to counterclaim for revocation
or invalidity133.

Limitations to the effects of a Trade Mark

Use of a name, address or Description of goods and Services

It is provided134 that the registration of a trade mark has no effect in 3 instances. First, in relation
to a bonafide use by a person of his/her place of business.

The own name defence does not apply to a registered company which chooses a trading name the
same or very similar to a well known trade mark. Thus in Hotel Cipriani SRI v Cipriani
(Grosvenor Street) Ltd,135 the claimant owned the famous CIPRIANI trade mark registered for
hotels and restaurants. The defendant opened a restaurant bin London under the name,
CIPRIANI LONDON. Clearly there was likely of confusion as the word London was not
distinctive. Concerning the own name defence it was held that the defendant could not avail its
self with the own name defence as it was not it own name. Arnold J said that the defence could
bnot be interpreted as applying to a company’s trading name. As opposed to its registered name.
Otherwise “this would constitute a substantial inroad into the rights conferred by the trade mark,
especially where a company had just commenced trading.

The own name defence does not also apply where an abbreviation of the name is used which
appears the same or very similar to the trademark. Thus in Premier Luggage and Bags Ltd. V
Premier Co. (UK) Ltd136, the defendant’s salespersons introduced themselves as being from
“Premier”, “Premier Luggage” or “Premier Luggage Co.” rather than “Premier Co. (UK) Ltd and
this constituted an infringement of the claimants’ trade mark “PREMIER”. The court also held
that this amounted to passing off.

Second, the registration of a trade mark has no effect in relation:

The bonafide use by a person of any description of the character quality of his or her goods or
services, not being a description that is likely to be taken as importing a reference mentioned in
section 36(2)(b).137

133
Section 23 Trade Marks Act 2010
134
Section 24 Trade Marks Act 2010
135
[2008] EWHC 3032 (CH), Bainbridge, supra 8th ED, 2010, p.770
136
[2003] FSR 69; Bainbridge ibid
137
Section 24 (b)Trade Marks Act 2010

20
In British sugar Plc v James Robertson & Sons138 it was held that the defendant’s use of the
phrase “Toffee Treat” was within section 11(2)(b) although, in any case, the claimant’s
“TRAOFT” trade mark was declared invalid. Similarly, in Bravado Merchandising Services Ltd
v Mainstream Publishing (Edinburgh) Ltd139, the defendant published a book, titled, A sweet
Little Mystery-wet wet wet-The inside story. The book concerned a pop group called “wet wet
wet”, which was registered as a trademark. It was held that the defendant’s use of the mark fell
within section 11(2) since it was descriptive of the content of the book.

Permitted Use / Consent of Owner

The defendant to an action for infringement may plead, in defence, that the trade mark is being
used in line with the permitted use or implied consent of the owner or registered user either in
relation to the goods140or services141. Additionally, there is no infringement relating to services in
the course of business with the owner or registered user of the mark where they have expressly
or impliedly consented to the use of the mark.

Goods / Services Accessory to Others

A defendant to an action for infringement can plead that there is no infringement in relation to
goods accessory to other goods where the trade mark has been used without infringement and the
use is reasonably necessary in order to indicate that the goods are adapted142. Similarly, there is
no infringement related to services available for use with other services in relation to which the
mark has been used without infringement if the use of the trade mark is necessary to indicate that
the services are available for that use143.

Identical Goods / Services

The defendant in an action for infringement can also plead, in defence, that the trade mark is one
of two or more registered trademarks relating to goods identical or resembling each other
pursuant to the right to use the trade mark registered in Part A of the register144. A similar
defence is available in relation to a trade mark relating to services145.

Lack of Deception or Confusion of Part B Registration

It is a defence in an action for infringement to plead that the use of the trademark complained of
is not indicative of any connection in the course of trade between the goods and the owner or

138
[1996] RPC 281
139
[1996] FSR 202
140
Section 36(4)(a) Trade Marks Act 2010
141
Section 37 (4)(a)Trade Marks Act 2010
142
Section 36 (4)(b)Trade Marks Act 2010
143
Section 37(4)(c)Trade Marks Act 2010
144
Section 36 (5)Trade Marks Act 2010
145
Section 37(5)Trade Marks Act 2010

21
registered user of the trade mark146. A similar defence is available in available in relation to
services whose trade mark is registered in Part B of the register147.

Prior Use of Trade Mark

A prior user of a registered trademark is protected from actions by registered users for
infringement of a trademark148. In Tanzania Cigarette Company Ltd. V Master Mind Tobacco
(T) Ltd. [2006]TLR 142, the High Court held that Section 30 of the Trade and Service Marks
Act, 1986 protects the right of an unregistered user of a trade mark. The holding would apply to
the corresponding provisions of the Trade Marks Legislation in Kenya and Uganda.

REMEDIES

The Trade Marks Act 2010 specifies a number of remedies available to a person whose rights as
defined under that Act are likely to be or have been infringed.

Injunction

A person whose rights under the Trade Marks Act are in imminent danger of being infringed
may institute civil proceedings in the court for an injunction to prevent the infringement or
prohibit the continuation of infringement149.

Nevertheless, the grant of such injunction does not affect the owners claim for damages in
respect of damages in respect of the loss sustained by him or her as a result of the loss sustained
by him or her as a result of the infringement of the rights under the Act150.

Inspection and Removal

A right owner under the Trade Marks Act 2010 may also apply exparte to the High Court for an
“Order for the inspection of or removal from the infringing materials which constitute evidence
of infringement by that person”151. This is presumably to enable the trade mark owner to secure
the evidence to be used in an infringement action against the infringer.

Damages

The Trade Marks Act 2010 also permits a person who has sustained any damage arising from the
infringement of his or her rights under the Act to claim damages against the person responsible
for the infringement. This is regardless of whether that person has been successfully prosecuted.

Trade Mark Application process and Required Documents

146
Section 38 (2)Trade Marks Act 2010
147
Section 39(2)Trade Marks Act 2010
148
Section 24 and 41 Trade Marks Act 2010
149
Section 79(1)Trade Marks Act 2010
150
Section 79(3)Trade Marks Act 2010
151
Section 79(2)Trade Marks Act 2010

22
Any person or corporation who is the owner of a mark used, or proposed to be used, by him in
Uganda, may make an application for the registration of a mark.

A person who intends to apply for registration of a trademark shall carry out a search to ascertain
whether the trademark exists in the register upon payment of a prescribed fee.

A trademark application is then filed upon payment of application fees. The application should
contain the mark proposed to be used, the class of goods or services, the name, address and
signature of the applicant. If the applicant is a foreign company, a Power of Attorney or Form of
Authorization (TM No. 1) to an agent (Advocate of the High Court) will be required.

The application is then examined to determine its inherent registrability and conflict with prior
existing registrations / applications.

If accepted, the application will be advertised in the Uganda Gazette for 60 days.

If there is no opposition after the expiration of 60 days of the advertisement, the Registrar shall
upon payment of the prescribed fees by the applicant enter the trademark in the register and issue
a Certificate of Registration.

A trade mark is valid for seven years from the filling date of the application and may be renewed
indefinitely for successive ten year periods upon payment of the prescribed renewal fee.

Fees payable152

Search Report Fees Ugx.25,000/= for Local applicants and US.$ 65 for Foreign applicants

Application Fees Ugx.50,000/= for Local applicants and US.$ 150 for Foreign applicants

Registration Fees Ugx.100,000/= for Local applicants and US.$ 250 for Foreign applicants

Registration Documents for Trade mark

TM Form1 Form for Authorization of an agent in case of Registration by an Agent.

TM Form 2 Trademark Application Form153

TM Form 27 Request for search (Regulation 89)

TM Form 10 Renewal for registration of a trademark

152
Section 26 Trademarks (Amendment) Regulations 2021
153
Regulation 4,17(2)

23
 BIBILIOGRAPHY

STATUTES APPLICABLE

Trademarks (Amendment) Regulations 2021

Trade Marks Act 2010

CASE LAW APPLICABLE

“Bonus Gold” Trade Mark [1998] R.P.C 859

“Company Line” DKV v OHIM [2003] ETMR. ECS

“York” TM [1984] R.P.C 231 HL

1-800 FLOWERS Inc. v Phonenames [2001] EWCA Civ 721; [2000] FSR 697;

Basic Trade Mark SA’s TM Application [2005] R.P.C 611, para 26. Ghazilian TM Application
[2002] R.P.C. 628

Besnier SA’s Trade Mark Application [2002] R.P.C 260

BP Amoco Plc v John Kelly Ltd[2001] FSR 307

Brooke Bond (Kenya) Ltd v Chai Ltd [1971] EA 10

Canon Kabushiki Kaisha v Metro Goldwyn Meyer [1999] FSR 332,

Cheetah trademark [1993] FSR 263

Cigarette Company Ltd. V Master Mind Tobacco (T) Ltd. [2006] TLR 142,

Coffee Mix Trade Mark [1998] R.P.C 717

Colgate – Palmolive Co.’s Trade Mark Applications [2002] R.P.C 519.,

Colorcoat TM Application [1990] R.P.C 511,

Davis v Sussex Rubber Co. [1927] 44 R.P.C 168

Duckham & Co’s Application [2004] R.P.C. 557.

E.A Industries Ltd v Trufoods Ltd [1972] EA 420

Elizabeth Emmanuel[2006] ETMR 750

Erpo Moebehwerk [2005] ETMR731 ECJ, para 36

24
Eurolambs Trade Mark Application [1997]ETMR 420

Foot Loops Trade Mark [1998] R.P.C 240

Hotel Cipriani SRI v Cipriani (Grosvenor Street) Ltd, [2008] EWHC 3032 (CH)

Imperial Group Ltd v Philip Morris & Co. Ltd [1982] FSR 72

In Aktiebolaget Jonkoping-Vulcan v E.A. Match Co. Ltd [1964] EA 62,

In British sugar Plc v James Robertson & Sons [1996] RPC 281 Bravado Merchandising
Services Ltd v Mainstream Publishing (Edinburgh) Ltd [1996] FSR 202,

In Misto Long Trade Mark Application[1999] ETMR 906

In Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo and others HCCS No. 2006
(Uganda)

Interlego AG’s Trademark Applications [1998] RPC 69

John Lewis of Hungerford Ltd’s Trade Mark Application [2001] R.P.C 575, 592,

Kiwi case supra also Cut Tobacco Ltd v British American Tobacco Ltd [2001] E.A. 24.

Kiwi Europe Holdings BV v Sajad Ali Ltd. [2005] T.L.R, 434,

KWH Saat v OHIM, [2005] ETMR 1016 ECJ

Letter “K” Trade Mark [2001] ETMR 181.

London Overseas Trading Co. Ltd. V The Raleigh Cycle Co. Ltd [1959] EA 1012 see also Re
Application Bourjois Ltd [1964] EA 265.

Lynn Trade Mark [1999] FSR 491

Merz & Krell (Bravo) [2002] ETMR 231.

Nestle v Mars [2005] FSR 684

Nordic Sauna Trademark [2002] ETMR 210

O2 One Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459.

O2 v Hutchinson [2000] ETMR 677para 75

Orange Personal Communications Services Ltd’s Application [1998] ETMR 460.

Philips Electronics NV v Remington Consumer Products Ltd[1998] R. P. C. 283

25
Phillips v Remington [2001] ETMR 509

Ponny McKinnon’s Application [1999] ETMR 234

Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2001] FSR 461.,

Premier Luggage and Bags Ltd. V Premier Co. (UK) Ltd [2003] FSR 69

Re Clarke 17 USPO (201) 1238 (1990)

Re Coca Cola [1986] 2 ALL ER

Scattered Sat 1 Satelliten Terhesen v OHIM (1913) 30 R.P.C 511,

Scattered Sat 1n Satellion Ternhesen v OHIM[2005] ETMR 20 ECJ,

Sickman [2003] ETMR 466 ECJ, para 72

Smith Kline & French Laboratories Ltd v Winthrop Group Ltd, [1976] R.P.C 511

Swiss Miss Trade Mark [1998] R.P.C 889.

Tecno Telcom Ltd v Kigalo Investments Ltd [2013]2 EA 376,

Triomed (Priprietary) Ltd. V Beecham Group Plc [2001] FSR 583

Ty Nant Spring Water Ltd’s TradeMark Application [2000] RPC 55, 59

Windsurfing Chiemsee [1999] ETMR 585 ECJ at paras 38-53.

LEGAL TEXT BOOKS APPLICABLE

Bainbridge, Industrial Property (London, Longman, 5th Edition, 2002) p. 531

Cornish & Llewelyn, Intellectual Property

Patents, Copyright, Trade Marks and Allied Rights (Loondon: Sweet& Maxwell, 6th Edition, 2007) paras
17-23, 18-03-20, 18-94

INTERNET RESOUCES APPLICABLE

Ursb.go.ug/intellectual-property/trademarks accessed on 22/2/2024

26