Trademark Registration Process in Uganda: Step by Step

The trademark registration process in Uganda has five main stages: a search of the trademarks register, an application to the Registrar at the Uganda Registration Services Bureau (URSB), examination of the application, publication of the accepted application for 60 days so that others can oppose it, and registration with the issue of a certificate if there is no successful opposition. The process is governed by the Trademarks Act, 2010 and its regulations.

Each stage has its own pitfalls. This guide explains what happens at every step, which forms are used and how to avoid the problems that cause refusals and delays.

Before you start: what you need

• A clear representation of the mark, such as the word in standard characters or a good-quality image of the logo.
• The applicant's details: full name and address of the individual or business that will own the mark.
• A list of goods or services and the class or classes they fall into. A mark filed in several classes is treated as a separate application for each class.
• An authorisation of agent (URSB Form TM2) if a lawyer or agent files for you. Foreign applicants usually file through a local agent.
• Payment of the prescribed fees for the search and the application.

If you are still deciding whether to register at all, our article on the benefits of trademark registration in Uganda explains what registration gives you.

The trademark registration process in Uganda, step by step

1. Search the register. Section 5 of the Act requires a person who intends to apply for registration to carry out a search, on payment of the prescribed fee, to check whether the mark or a similar mark is already on the register. URSB's search request form is TM47. A search reduces the risk of objection and of later disputes.
2. Consider preliminary advice. If you are unsure whether the mark is distinctive enough, you can ask the Registrar for preliminary advice before filing (Form TM4).
3. File the application. The application is made in writing to the Registrar in the prescribed form, for registration in Part A or Part B of the register, with the representation of the mark, the applicant's details and the goods or services. URSB accepts filings through its online system, and fees are paid at filing.
4. Examination. The Registrar examines whether the mark meets the legal requirements, including distinctiveness, and whether it conflicts with earlier marks. The Registrar may accept the application, accept it with conditions or amendments, or raise objections. You can respond to objections with arguments or amendments.
5. Publication. Once accepted, the application is published, in practice in the Uganda Gazette, for 60 days under section 11 of the Act.
6. Opposition. Any person may give notice of opposition within the prescribed time after publication (Form TM7). The applicant then files a counter-statement (Form TM8); if the applicant fails to do so within the prescribed time, the application is treated as abandoned. The Registrar hears the parties and decides.
7. Registration and certificate. If there is no opposition, or the opposition fails, the mark is entered on the register and a certificate of registration is issued.

Part A and Part B

The register has two parts. Part A is for marks that are inherently distinctive. Part B can accept marks that are capable of distinguishing the owner's goods or services, even if they are less distinctive. Part A registration generally gives stronger protection, so the choice matters. Your adviser will recommend the right part when preparing the application.

Responding to an examination objection

An objection from the Registrar is not a refusal. It is a chance to put your case. A good response usually does one or more of the following:

• explains why the mark is distinctive, for example because it is an invented word or has an unusual design;
• shows that the mark has become distinctive through use, with evidence such as sales figures, adverts and customer recognition;
• narrows the list of goods or services to avoid a conflict with an earlier mark;
• offers a disclaimer of a descriptive element, or relies on the consent of the owner of an earlier mark where appropriate.

Keep to the deadline in the Registrar's letter, or ask for an extension of time before it expires.

How long does the process take?

The 60-day publication period is fixed by the Act, but the overall time depends on how quickly the application is examined, whether the Registrar raises objections, whether anyone opposes the mark and how promptly you respond. Online filing has helped speed things up, but plan for several months from search to certificate, and longer if there is an opposition.

Once registered, the mark is protected for an initial period of seven years under the Act and can then be renewed every ten years on payment of the renewal fee, so diarise the dates as soon as the certificate arrives.

Fees

URSB charges prescribed fees for the search, the application, publication-related steps, the certificate and renewal, and the forms are listed on URSB's intellectual property forms page. Fees are revised from time to time, so confirm the current amounts with URSB or with us before filing, and budget for professional fees if you use an advocate.

Common reasons applications fail or are delayed

• Descriptive marks. Words that simply describe the goods, their quality or origin are hard to register.
• Similarity to existing marks. Skipping or misreading the search often leads to objections or oppositions.
• Wrong classes or vague descriptions. The protection follows the goods and services you list, so too narrow a list leaves gaps and too broad a list invites objections.
• Applicant errors. Filing in the name of the wrong person, such as a director instead of the company, creates ownership problems later.
• Missed deadlines. Failing to respond to an objection or opposition in time can lead to the application being treated as abandoned.

After registration

Registration is the start of your rights, not the end of your work. Use the mark, keep evidence of use, record licences and changes of ownership, and diarise renewal dates. If your company name and brand are the same, remember that the company's registration under the Companies Act does not replace a trademark registration; see how to register a company in Uganda for the company side of the process.

How Mercio Advocates can help

Our business law and intellectual property team handles the full trademark process: searches, advice on classes and distinctiveness, filing with URSB, responding to objections, oppositions, and renewals. To protect your brand, call +256 785 390 207, email info@mercio.org or book an appointment.

This article provides general information about trademark law in Uganda and is not legal advice. Procedures, forms and fees change and should be confirmed with URSB or our office. For advice on your brand, please contact Mercio Advocates.