The important question is what are the requirements for a foreign mark to be granted
Protection in Uganda where it is not registered in Uganda are provided for under section
44. The opponent must satisfy, on a balance of probabilities, the requirements under
Section 44.
Under Section 44 (1), the registrar may refuse to register a trademark relating to goods
in respect of goods or description of goods if it is proved to his or her satisfaction by the
person opposing the application for registration that the mark is identical with or nearly
resembles a trademark which is already registered in respect of the same goods,the
same description of goods or services or a description of services which are associated
with those goods or goods of that description, in a country or place from which the goods
originate.
The applicant seeks to register the mark in class 30. The opponent’s mark has been
registered in several countries in different classes of goods and services including class
30.Third, under section 44 (1), the opposed mark allegedly likely to be infringed by the
registration of the applicant’s mark must be registered in a country (meaning the country
where registration is sought) or in the place (which includes a country) from where those
services originate. It is already settled that opponent’s mark is not registered in Uganda.
Therefore I will now turn to the second alternative, namely that the opposed mark and its
associated goods or services purported to be likely to be infringed by the registration of
the applicant’s mark, must be registered in a place (country) where the services or goods
originate. Under this alternative criterion, the place of origin for the opponent’s services
is Japan.
Section 44(3) of the Trademarks Act 2010,provides that; “ An application to register shall
not be refused under this section where— a) the applicant proves that he or she or his or
her predecessors in business have in Uganda, in relation to the goods or services,
continuously used the trademark for the registration of which he or she has made
application from a date before the date of the registration of the other mark in the country
or place of origin; or b) the person objecting does not give an undertaking to the
satisfaction of the registrar that he or she will, within three months from the giving of the
notice of objection, apply for registration in Uganda of the trademark registered in the
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