Friday, 15 August 2008

Trademarks Bill 2008 Finally gazetted in Uganda

The Government of Uganda has filally gazetted the Trademarks Bill 2008 after a protracted process of review spanning over 5 years. According to the memorandum, The new law is expected to meeet the demands of "present day policies, international obligations, globalisation and technological developments". The other reason is that the current law is perceived as one that impedes investment as a result of inadequate protection provided under it.

Below are some highlights of the bill, soon to be tabled:

1. The definition section of the bill brings the much awaited provision that allows registration of service marks. The definition reads as follows: "trademark means,a sign, or mark, or combination of signs or marks capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of another undertaking".

2. The bill provides more extensively for the registration of certification marks in comparison with the existing Trademarks Act cap 217. In particular, it provides that certification marks will only apply to goods and not services.

3. The Length of Protection for first filings remains the same at seven years. For unknown reasons however, renewal periods have been reduced from 14 years under the existing law (see s. 22 of the Trademarks Act, Cap 217) to 10 years.

4. The bill provides under S.45 and 46 priority rights for marks already registered in countries of origin on the basis of reciprocal treatment.

5. The Bill provides more explicitly for remedies in the event of infringement. These include:
*injunctions
*prohibition on import of goods bearing an infringing trademark
*prohibition on export of goods bearing infringing trademarks
* damages or rendering an account for profits
*cancellation of trademark registration

6. The Bill requires applicants in proceedings challenging the registration of a mark who reside outside East Africa (Rwanda, Burundi, Kenya, Tanzania and Uganda) to provide security for costs. This requirement also applies in applications where an applicant seeks to expunge a mark from the register under s.46.

7. Offenses under the Penal Code Act, Cap 120 relating to trademarks are subsumed under the new bill. More importantly, the bill creates new offenses and provides new penalties as follows:
*falsifying a registered trademark
*falsely applying a registered trademark
*manufacture and possession of things used in an offense.

The fines proposed are a maximum of 48 currency points or imprisonment for 2 years or both. Whereas the prison sentence may be of some deterrence, its hardly likely to dent the enthusiasm of well connected business people dealing in counterfeits, some of which are dangerous to human life. The bill needs to reduce the judicial discretion in applying sentencing and increase the monetary fine from the proposed 48 currency points (960,000 shillings or about US$500 to the equivalent of US$100,000. This will act as a more realistic deterrent and discourage the rampant import counterfeit medicines which pose an unprecedented threat to health in Uganda and the East African region at large.

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