A person may not Institute proceedings to prevent or to recover damages for an unregistered
trademark under section 34 of the Trademarks Act 2010.
Before reaching a conclusion on the provisions of the domestic law in relation to applications
and enforcement of the Trademarks Law in Uganda, I have considered the provisions relating to
applications for registration.
It is the Plaintiff's contention that it is registered under part "A" of the Trademarks Act 2010. A
person who claims to be the owner of the trademark used or proposed to be used by him or her
and is desirous of registering it shall apply under section 7 (1) of the Trademarks Act to the
Registrar in the prescribed form for registration in part "A" or "B" of the Trademarks Act. I will
further answer the question of who is an owner making an application for registration as written
under section 7 (1) of the Trademarks Act 2010? The word “owner” under the section means
someone who has property rights to the trademark such as ownership conferred by registration of
the Applicant. The second category is a person who seeks to be registered as an owner of a
trademark, the subject matter of the application. The distinction between the two categories of
Applicants is important for purposes of establishing which provision of law to consider so as
conferring entitlement to registration. If the person claims to be the owner, either the Mark is
associated with him or her or he or she is already registered in respect of the Mark in another
country. However if the Applicant just intends to own the Mark, he or she is making a fresh
application for registration as an owner.
There are several matters to be considered by a Registrar of Trademarks before registering a
trademark. These include distinctiveness of the mark sought to be registered, the association of
the mark with a class of goods, and whether it is capable of registration in Uganda among other
things. In this respect a Registrar exercises discretionary judicial powers to register a person if
that person's application has not been challenged or objected to upon the publication of the
intention to register the mark nationally.
The application has to be published (see section 11 of the Trademarks Act 2010). Thirdly under
section 12 of the Trademarks Act, the law gives any person the right to give notice to the
Registrar of objection to the registration of a mark sought to be registered and published for the
public to have an opportunity to object to. The objection shall be decided by the Registrar before
Decision of Hon. Mr. Justice Christopher Madrama
Izama *^*~?+:
25