International markets profit from trademark protection than local markets because manufacturers (read innovators) understand the need to protect their innovations and regulate their international sales. It is common to find foreign innovators applying for trademark protection in local jurisdictions than our local innovators. Some local innovators do not even understand the meaning of protecting their works from abuse, alteration, and copycats, name it.
The best way to protect an innovation is to brand it so as to identify it with your company/organisation/production. Understanding what trademarks entail will guarantee a positive decision to apply for this type of commercial protection.
According to section 1 of Uganda’s Trademarks Act 17 of 2010 (the Act), 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’.
Simply put, your goods will be differentiated from another’s goods by the sign or mark or distinctive words you use to identify /brand them. For example, no matter how many battery cell companies manufacture the product, none compares to the Tigerhead brand. Similarly, electric bulbs have Phillips bulbs to emulate, just like Nokia, Samsung, Apple electronics do have weight in their respective products.
Trademarks are different from certification marks, which ordinarily identify goods of a certain origin, material, and mode of manufacture, quality, accuracy or other characteristic. (This can be topic for another article)
What amounts to ‘protectable subject matter’?
Section 4 of the Act provides that a sign or combination of signs, capable of distinguishing goods or services can be marked out.
This term literally means uniqueness.
In the economy, many manufacturers have the liberty to produce similar or same goods or services. What separates these entities is how they can be identified. This is where branding makes a difference.
If a Hospice Care Hospital in Nairobi and one in Kampala have ‘Mambo’ as their trade/brand name, chances are that the ordinary service user will assume they are connected or related in business. If not, this similar branding will confuse the public, especially if one offers lesser services or undesirable results.
Therefore, what may differentiate ‘Valentine’s Cake’ from ‘E Cake’ could be that difference in the brand name.
Distinctiveness differs for goods and services:
For marks relating to goods, it must distinguish the goods of the trademark owner from those his goods are connected to: whilst
For marks relating to services, it must distinguish the goods of the mark owner from those his/her/its services are not connected to.
What to do before you apply for a Trademark
Search: Making a formal search at the Trademarks Registry could save you a lot of trouble and money. A search enables you ascertain a mark’s availability for your goods. When you pay a search fee, you will be given formal communication on whether or not your suggested trademark is available for you to use.
On rejection, expiry and renewal of trademarks:
Undesirable marks will not be registered. The Registrar reserves the right to accept and reject a sign, mark or word. If you are aggrieved, you have an option to appeal to court for redress.
A trademark is valid for seven years and can be renewed. Each process has its own forms.
Commercially, trademark protection has proved important for most international companies owning licences and rights to trade in certain items. Branded products sell more and faster than non-brands. Trademarks are brand names. Imagine your business product in the hands of a trusted buyer or consumer. Chances are that you will build a consumer base that is loyal to your products as long as you maintain and improve quality overtime.
Trademarks in form of brand names or logos or signs are also eye catching. Consumers always have a bias towards brands and since the world economy turned into a global trading village, brands definitely influence purchases. Reputable brands garner more market than start-ups but this should not discourage the latter. Reputable brands grew over a period of time. This means that once a Trademark is given to a product or business, its reputation will grow gradually.
Each trademark application has unique factors which, safe to say, can well be handled by Legal Counsel. Seek the services of a licensed Trademark Lawyer to discuss further details of trademark protection this edited article has not touched.
BY ATUHAIRWE AGRACE
This article appears in our digital law newsletter, The Deuteronomy Vol 4, Issue 2 of April 14th 2017
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