How to register a trademark in Uganda

1. At a glance

This note is written for a business owner or brand holder, or their advocate, seeking to register a trademark in Uganda, and for anyone enforcing a mark against a counterfeiter or a confusingly similar competitor. It does not cover copyright, patents, industrial designs or geographical indications — each is a separate intellectual-property regime with its own statute — nor does it cover the mechanics of registering a business name or company, which give no trademark protection at all (see the companion note on that distinction).

The Trademarks Act, 2010 (Act 17 of 2010) is cited by Act number, not a chapter number, so it is unaffected by the 2023 chapter-renumbering exercise that moved several adjacent registry statutes in this cluster. Even so, a registered trademark is a different, and stronger, form of protection than a registered business name or company name — the latter two only stop someone else registering an identical name at the registry, while a trademark gives an exclusive right to use the mark in trade and grounds an infringement action against a confusingly similar competitor.

2. Why register a trademark at all

Registration converts a mark from something merely used in trade into something with a statutory exclusive right attached to it. Once registered, the owner does not need to prove, each time it is challenged, that the mark has built up goodwill and a reputation in the market — the registration itself is the foundation of an infringement claim under s.36, provided the defendant's mark is identical with, or so nearly resembles, the registered mark as to be likely to deceive or cause confusion in the course of trade for the same description of goods or services.

Registration is not, however, the only source of protection. Section 35 expressly preserves passing off as an independent right of action, and s.1(1) defines it as falsely representing one's own product as that of another in an attempt to deceive potential buyers. This means a business that has built up real goodwill in an unregistered mark or get-up is not defenceless against a copyist — but proving passing off requires proving goodwill, misrepresentation and damage from scratch each time, whereas a registered mark starts from the certificate itself. The practical lesson is to register early rather than rely on passing off as a fallback.

3. The registration process

An applicant should first carry out a search of the trademarks register to check whether the proposed mark is available — that is, not already registered, and not so similar to an existing registered mark that it is likely to be refused or opposed. The registrar can be asked for advice at this stage. Once satisfied the mark is a reasonable prospect, the applicant files a formal application identifying the mark itself and the specific class or classes of goods or services for which protection is sought.

The registry examines the application; queries raised at examination (for example, a concern the mark is too descriptive, or conflicts with an existing registration) must be answered before the application can proceed. On acceptance, the mark is advertised, opening a window for third parties to oppose the registration. If unopposed, or if an opposition is resolved in the applicant's favour, the mark proceeds to registration and a certificate issues.

4. Duration and renewal

Registration is not permanent without action: it runs for an initial period of seven years from registration, and is renewable every ten years thereafter on payment of the prescribed fee. This duration pattern is corroborated by the Commercial Court's own recitation, in Colgate Palmolive v Sombe Supermarket, of the plaintiff's registration certificates and their 'seven years from the date of registration... may be renewed' language — but the precise section numbers for this point were not independently re-fetched verbatim from the primary Act text in this research round (the judgment's own focus was infringement and passing off, not duration), so re-confirm the exact sections before citing them in a filed document (see grey-areas below).

5. Infringement of a registered mark

Section 36 is the statutory backbone of an infringement claim. It gives the owner of a registered mark the exclusive right to its use for the registered goods or services, and treats as an infringement any use, in the course of trade, of a mark identical with the registered mark, or so nearly resembling it as to be likely to deceive or cause confusion, in relation to goods or services for which the mark is registered (or of the same description). The test does not require proof of actual confusion in every customer — the statutory standard is likelihood of deception or confusion in the course of trade.

The clearest illustration of s.36 in practice is Colgate Palmolive Company Ltd v Sombe Supermarket Ltd, where a supermarket was found selling counterfeit toothbrushes branded 'Colage Double Action' — a mark deliberately close to the plaintiff's registered 'Colgate Double Action' mark in spelling, packaging and get-up. On formal proof after default judgment, the Commercial Court had little difficulty finding the marks identical or so nearly resembling each other as to be likely to deceive or cause confusion in the course of trade, for the same goods (toothbrushes) — squarely within s.36(1)-(2), which the judgment quotes in full.

6. Passing off — protection independent of registration

Section 35 makes clear that trademark registration does not displace the older common-law tort of passing off: 'nothing in this Act shall be taken to affect a right of action against a person for passing off goods or services as the goods or services of another.' Section 1(1) defines passing off as falsely representing one's own product as that of another in an attempt to deceive potential buyers. This matters because passing off protects goodwill in a mark or get-up whether or not that mark is registered at all — a genuinely useful backstop for a business that has not yet registered, or whose unregistered branding has still built up real market recognition.

The general proposition that passing off protects even an unregistered mark is well established and is consistent with Colgate's own discussion of s.35 as preserving the common-law action independently of registration. A further case, Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo & Others (HCT-00-CC-CS-430 of 2006, [2007] UGCommC 64, 21 June 2007), is reported to have applied this proposition — but that case's full text was not independently fetched in this research round, so its specific holding should be treated tentatively and verified before it is cited directly for a proposition beyond the general principle already well established through Colgate itself.

7. How the courts approach infringement and passing off together

Colgate Palmolive Company Ltd v Sombe Supermarket Ltd is the richest available Ugandan authority on how the courts actually work through a combined infringement and passing-off claim, and repays close reading.

On passing off specifically, the court applied the classic five-element test from Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873 (Lord Jauncey) and Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] 2 All ER 927 (Lord Diplock's five ingredients of a passing-off action — misrepresentation, made by a trader in the course of trade, to prospective customers, calculated to injure the goodwill of another trader, causing actual damage). The court then measured confusion through the East African authority Haria Industries v PJ Products Ltd [1970] 1 EA 367 — the test of the 'average customer... acting with reasonable care,' not a careless or a suspiciously careful one. Applying that standard to counterfeit toothbrushes sold in ordinary retail packaging, an average customer shopping without special scrutiny would readily be deceived by the near-identical branding.

The judgment is also useful for showing that infringement and passing off, though analytically distinct causes of action, are frequently pleaded and proved together on the same facts — the same counterfeit conduct satisfies both the statutory test (identical or nearly-resembling mark, likely confusion, same goods) and the common-law test (misrepresentation, goodwill, damage).

8. Damages and remedies — a worked example from Colgate

Colgate Palmolive v Sombe Supermarket is also the clearest available Ugandan illustration of how a court quantifies loss in a combined infringement/passing-off claim, and is worth walking through step by step.

The lesson for a plaintiff's advocate is to plead both general damages (the ordinary compensatory measure for the infringement/passing-off loss) and, where the facts support it, exemplary damages separately and explicitly — citing the deliberate, profit-motivated nature of the defendant's conduct as the basis for the exemplary head. A defendant, conversely, should be alert that a plainly deliberate counterfeiting operation invites an exemplary award on top of ordinary compensation, not instead of it.

Beyond damages, the Trademarks Act gives a plaintiff a practical enforcement tool against an ongoing counterfeit operation: an Anton Piller-style inspection and seizure order under s.79(2) and s.86(1), executed by Inspectors of Trademarks appointed under s.82. This lets a rights holder move to stop the sale of counterfeit stock and preserve evidence before or alongside filing the substantive suit, rather than waiting for judgment while the counterfeiting continues unchecked.

9. Consequences of getting it wrong

For a mark owner, failing to register promptly leaves the business dependent on proving passing off from scratch — goodwill, misrepresentation and damage — every time it needs to act against a copyist, rather than relying on a registration certificate as the foundation of an infringement claim. Missing a renewal deadline after registration can lapse protection altogether, handing a competitor the opportunity to register a confusingly similar (or even identical) mark.

For a business selling counterfeit or confusingly similar goods, Colgate shows the exposure is real and can be substantial — a combined general-and-exemplary-damages award of UGX 50,000,000 against what was, on the facts, a single supermarket outlet. A trader who stocks suspiciously cheap branded goods without checking their provenance risks exactly this kind of liability, on top of reputational harm and the disruption of an inspection and seizure order under s.79(2)/s.86(1).

10. Practical guidance and drafting tips

Advise a client to register early and in every class of goods or services the business genuinely trades in, or plans to trade in within a reasonably foreseeable horizon — narrow, reactive filing after a dispute has already arisen is a weak position to litigate from.

• Search the register thoroughly before filing, including for marks that are similar in sound, appearance or meaning, not merely identical in spelling — the s.36 test and the passing-off confusion test both look at the overall impression on an ordinary customer, not a letter-by-letter comparison.
• Where counterfeit goods are discovered, move quickly: consider an inspection/seizure application under s.79(2)/s.86(1) to preserve evidence and stop ongoing sales, alongside preparing the substantive suit.
• Plead both infringement (if registered) and passing off together where the facts support both — Colgate shows courts are comfortable finding both made out on the same conduct, even though damages will not be doubled for the same loss.
• When pleading damages, separate the general-damages argument (the ordinary compensatory loss) from the exemplary-damages argument (the defendant's deliberate, profit-motivated conduct) and support each with its own evidence and authority.
• Diarise renewal deadlines rigorously — a lapsed registration is a genuinely difficult position to recover from.
• Keep evidence of a mark's use and reputation even where it is registered — if registration ever lapses or is challenged, that evidence is what a passing-off claim would need to fall back on.

11. Common pitfalls

• Skipping the search and applying for a mark already registered or too similar to an existing one.
• Registering in the wrong class(es) of goods or services, leaving the mark unprotected in categories the business actually trades in.
• Missing the renewal and losing protection.
• Assuming registration is permanent without renewal, or that unregistered use alone gives the same protection as registration — it gives passing-off protection only, which is harder and more expensive to prove each time.
• Suing only for infringement where passing off is also available (or vice versa) — plead both where the facts support them, as in Colgate.
• Assuming a court will award general and exemplary damages twice over for the same underlying loss — Colgate shows the court collapses the compensatory heads into one award and treats exemplary damages as a genuinely separate, conduct-based head.
• Treating a registered business or company name as equivalent trademark protection — it is not; only trademark registration (or passing off) protects against a confusingly similar competing mark in trade.

12. Grey areas and points to confirm

• The precise section numbers for duration and renewal (commonly cited as ss.18, 21 and 22 — seven years initial registration, Part A registration becoming conclusive after seven years, renewable every ten years) were not independently re-fetched verbatim from the primary Act text in this research round. The Colgate judgment corroborates the general 'seven years... may be renewed' substance, and it is consistent with the legacy content of this note, but the exact section numbers should be re-confirmed verbatim by a verifier against the consolidated Act before this essay ships as final, and before being quoted directly in a filed document.
• Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo & Others ([2007] UGCommC 64) is cited above only tentatively for the general proposition that passing off protects an unregistered mark — its full text was not independently fetched in this research round (only a search summary was available), so its specific holding should be verified before being relied on for anything beyond that general, otherwise well-established proposition.
• Techno Telecom Ltd v Kigalo Investments Ltd (Miscellaneous Cause No. 17 of 2011, [2011] UGCommC 112), reportedly concerning counterfeit 'TECNO' phones, was found via search but not independently read in this research round — it is not cited above for any specific holding and should not be added without a full-text verification.
• The current prescribed registration and renewal fees were not independently verified in this research round — confirm the current schedule with the trademarks registry (URSB) before quoting a figure.

13. Practitioner checklist

1. Search the register for identical and confusingly similar marks before filing.
2. Identify every class of goods or services the mark should cover, including reasonably foreseeable future trading.
3. File the application and respond promptly to any examination queries.
4. Monitor the advertisement period for opposition.
5. On registration, obtain the certificate and diarise the seven-year and ten-year renewal milestones.
6. If counterfeit or confusingly similar goods appear in the market, gather evidence promptly and consider an inspection/seizure application under s.79(2)/s.86(1).
7. Plead infringement and passing off together where both are available on the facts, and separate the general- and exemplary-damages arguments in the pleadings.
8. Re-confirm the exact duration/renewal section numbers against the current consolidated Act before filing anything that quotes them.

14. Sources and further verification

Sections 1(1), 35 and 36 of the Trademarks Act, 2010 were verified verbatim through the Commercial Court's own direct quotation of them in Colgate Palmolive Company Ltd v Sombe Supermarket Ltd ([2017] UGCommC 6), as were the enforcement provisions (s.79(2), s.82, s.86(1)). Duration and renewal (commonly cited as ss.18, 21, 22) were not independently re-fetched verbatim this round — see grey-areas above. Statutory text verified against the consolidated Laws of Uganda as at 31 December 2023. Sourced from the Uganda Legal Information Institute (ulii.org).

Before filing anything relying on this note, re-confirm the exact duration/renewal section numbers against the current consolidated Trademarks Act, 2010, re-read Colgate Palmolive v Sombe Supermarket ([2017] UGCommC 6) in full for any point being quoted directly, and independently verify Nanoomal Isaardas Motiwalla (U) Ltd v Sophy Nantongo & Others ([2007] UGCommC 64) before relying on it for anything beyond the general passing-off-protects-unregistered-marks proposition.