EXCEPTIONS, RESTRICTIONS, AND UNREGISTRABLE TRADEMARKS
UNDER UGANDAN LAW: REGULATIONS 13 SI 58 OF 2012 AND SECTION
23 OF THE TRADE MARKS ACT (CAP 225)
Trademark legislation in Uganda, as delineated in the Trade Marks Act Cap
225 and the Trade Marks Regulations SI 58 of 2012, establishes various
exceptions and restrictions that define what may or may not be registered as a
trademark. Not all symbols or marks qualify for protection under the Act, and
specific conditions are in place to ensure a fair and balanced trademark
registration system.
1. Section 23 of the Trade Marks Act Cap 225: Unregistrable Trademarks
Section 23 of the Trade Marks Act Cap 225 specifies a list of marks that are
ineligible for registration, including:
Marks Lacking Distinctiveness:
A mark that is merely descriptive or lacks distinctiveness cannot be registered.
For instance, a brand name such as "Fresh Bread" for a bakery would likely be
deemed descriptive and thus not registrable.
Deceptive Marks or Those Likely to Cause Confusion:
A trademark that may deceive or confuse consumers in the marketplace will be
denied registration. This includes marks that are identical or confusingly
similar to existing trademarks or suggest an association with well-known
brands that does not exist.
Marks Against Public Policy or Moral Standards:
Trademarks that contravene public decency, morality, or established social
norms are also unregistrable. This category includes marks that are offensive,
scandalous, or promote harmful behavior.
Generic Marks:
Marks that are generic or commonly used in relation to the goods or services
they purport to represent are unregistrable. For example, a mark like "Apple"
for apples (the fruit) is too generic to be registered.
Geographically Descriptive Marks:
A trademark that is purely geographically descriptive (e.g., "Kampala
Supermarket" for a supermarket in Kampala) may not qualify if it lacks
distinctiveness and could create confusion about the actual origin of the goods
or services.
Marks Identical or Confusingly Similar to Previously Registered Marks:
If a trademark is identical or confusingly similar to a previously registered
mark, it may be refused registration to avoid confusion and maintain the
exclusive rights of the prior trademark holder.
Commonly Used Marks:
Marks that consist solely of common or widely used designs, such as basic
geometric shapes, are not eligible for protection.
Descriptive Marks Regarding Quality, Quantity, or Intended Use:
Marks that describe the quality, quantity, or intended use of goods or services
may not be registrable. For instance, "Pure Water" for bottled water is likely to
be rejected as it simply describes the product.
2. Regulations 13 SI 58 of 2012: Specific Provisions on Unregistrable
Marks
The Trade Marks Regulations SI 58 of 2012, particularly Regulation 13, further
clarifies the marks that are not registrable and the restrictions concerning
certain types of trademarks.
Marks Identical to or Confusingly Similar to Well-Known Trademarks:
According to Regulation 13, a mark is unregistrable if it is identical or overly
similar to a well-known mark that may confuse the public.
Official Emblems, Flags, and Symbols:
Marks resembling official emblems, state flags, coats of arms, or other national
symbols cannot be registered without obtaining permission from the
appropriate authorities.
Marks Violating Ugandan Laws:
Any mark that contravenes existing Ugandan laws (such as laws against
discrimination or hate speech) is unregistrable.
Involvement of Famous Persons' Names Without Consent:
A trademark that includes the name, image, or likeness of a famous individual
or public figure cannot be registered without explicit consent from that person.
Offensive or Scandalous Marks:
Marks considered scandalous, immoral, or offensive are specifically excluded
from registration.
Geographical Terms for Goods:
Geographical names (like countries, cities, or regions) cannot be used as
trademarks unless the goods originate from that area and possess a distinct
connection to the geographic term.
Descriptive Marks:
Marks that simply describe characteristics, quality, or other attributes of the
goods or services are unregistrable.
3. Specific Examples of Unregistrable Marks
Here are some illustrative examples of marks that may be deemed
unregistrable under the Trade Marks Act and Regulations:
Descriptive Marks:
"Quick Delivery" for a delivery service is purely descriptive and would be
rejected.
Deceptive Marks:
A trademark such as "Golden Apple" for a fruit that is not golden may be
considered deceptive.
Offensive Marks:
A mark like "Uganda's Best Sex Shop" could be rejected due to potential
offensiveness.
Resemblance to State Symbols:
A logo similar to the national flag of Uganda could be denied registration unless
authorized.
Commonly Used Terms:
"Best Bread" for a bakery is likely to be refused since "best" is a common and
descriptive term.
Geographically Descriptive Marks:
"Kampala Shoes" for a shoe brand would be unregistrable unless it can show
distinctiveness and a connection to Kampala.
4. EXCEPTIONS AND UNREGISTRABLE TRADEMARKS
Distinctiveness is Essential:
For a mark to be eligible for registration, it must have distinctiveness. Marks
that are overly generic, descriptive, or commonly used are not registrable.
Public Order and Morality:
Marks deemed offensive, immoral, or misleading are explicitly excluded by both
the Trade Marks Act and Regulations.
Protection of State Symbols and Famous Names:
The use of state symbols, names of renowned individuals, and geographical
indications is meticulously regulated to prevent misuse that could mislead the
public or harm public interests.
Passing Off:
Even if a mark is unregistered, passing off (where a mark is similar to another's
mark) can still be actionable under trademark law.
A trademark must fulfill specific criteria to qualify for registration. The Trade
Marks Act Cap 225 and Regulations 13 of SI 58 of 2012 outline precise
exceptions, restrictions, and limitations to ensure that trademarks effectively
distinguish goods and services while promoting fairness and safeguarding
public interests.