Opposition To The Registration Of A Trademark In Uganda

KEY ELEMENTS

Who can make an opposition? Grounds for opposition. Protection of trademarks registered in country of origin. Opposition procedure and forum. Key documents required. Role of trademark agents. Fees involved. Who has standing to make opposition?

Opposition may be made by any person claiming prior rights to exclusive use of the mark or any other interested person that has sufficient grounds.

Grounds for opposition

There are several grounds that a person making an opposition may rely on. First, Opposition may be made against registration of a trademark under s. 12 on ground that the trademark is similar or nearly resembles the trademark already registered and is therefore likely to deceive or confuse consumers; secondly, opposition may be brought under the provisions of s. 44 on grounds of prior registration in the country of origin. A person may also rely on such grounds as, prior application; prior use; mark not being distinctive; mark being deceptive; mark being generic. A person may also rely on any other ground of unregistrability, i.e. the mark not protectable in a court of law.

Opposition procedure and forum

Opposition procedure is found under s. 12, 44 and 45 of the Trademarks Act 2010 and Regulation 28 and 29 of the Trademark Regulations SI NO 58/2012. Opposition commences by the person giving notice of opposition to the registrar of trademarks in Form TM 6 opposing the registration. This notice of opposition must be made within 60 days from the date of publication of the application in the gazette. The notice must contain the particulars of the application namely; the applicant, the application number, the person opposing and their address, the date of advertisement of the application. The notice must also specify the grounds upon which the opposition is based with supporting documentary or any other evidence. Where registration is opposed on grounds that the mark resembles a mark(s) already registered, the numbers of the registered mark(s) and the number of the mark(s) advertised in the gazette must be set out in the notice. It must then be signed by the person making the opposition or their Attorney/ advocate. The notice is required to be in duplicate.

The registrar thereafter serves a copy of the opposition on the applicant who is required to respond within forty two days by way of a counterstatement in form TM7 setting out the ground upon which the applicant relies as supporting the application for registration of the...