What are the causes of counterfeiting and piracy in Uganda?
The products are a look-alike and can only be identified by experts; therefore, the dealers take advantage of the unsuspecting customers to sell the counterfeit products. The outside presence of counterfeit goods, in particular locations, like Bugolobi and Nasser Road, are some of the key reasons of the presence of counterfeit and pirated goods in Uganda.
Which are the goods that most often face counterfeiting and piracy in Uganda?
Drugs and apparel are the goods that most often face counterfeiting and piracy in Uganda.
Does Uganda have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
What are the specific lawd/orderd/rules laid down in Uganda for the enforcement of Intellectual Property Rights?
They are as follows:
The Constitution of the Republic of Uganda 1995 (as amended);
The Trademarks Act 2010;
The Geographical Indications Act 2013;
The Copyright and Neighbouring Rights Act 2006;
The Uganda National Bureau of Standards Act, Cap 327; and
The National Intellectual Property Policy 2019.
What are the different types of IPRs protected by IPR enforcement in Uganda?
Trademarks, Copyright and Neighbouring Rights, and GIs are the different types of IPRs protected by IPR enforcement in Uganda.
What are the general IPR enforcement obligations in Uganda?
In Uganda, it is necessary to send a cease and desist letter, after which, a preparation of pleadings is made within 14 days. Also, where the proprietor wishes to institute criminal proceedings against an alleged infringer, where the standard of proof is “beyond reasonable doubt,” is a constitutional requirement. Therefore, it is necessary to collect such documentary evidence that corroborate to such degree of use to successfully enforce an IPR enforcement proceeding.
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
Protection of unregistered rights is limited. There is no established test for use that will afford an unregistered mark protection. However, the recognition of unregistered rights is often attributed to substantial goodwill accrued by use of the unregistered mark and notoriety or popularity of the same, both of which are subjective. Therefore, if the proprietor of an unregistered trademark wishes to institute proceedings for the prevention or recovery of damages, he or she may do so only if he or she has obtained its registration. Therefore, in some instances registration is necessary.
Is there any limitation period for filing an infringement action?
*The Trademarks Act of 2010 does not make any difference to time limitations for trademark infringement; however, the trademark infringement claims are classified as claims and a common law, and thus, the period for filing such claims is limited to 06 years under the limitation act, Cap 80.
Which of the following IPR enforcement channels is/are available in Uganda?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes/tr>
Are civil actions available for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Which of the following types of civil remedies is/are available in Uganda?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Uganda than the ones mentioned above? If yes, then kindly explain in brief.
Other civil remedies are as follows:
Anton pillar orders
The Trademarks Act 2010;
TOrders to expunge or vary any entry in the trademark registry
An account for profits, delivery up, and costs of the suit
What is the approximate timeline of civil litigation related to IPR enforcement in Uganda?
The key pre-trial procedural stage includes filing of cease and desist letter, preparation of pleadings, filing of pleadings, which approximately take up to 01 month to reach the stage of trial. Thereafter, the timeline of the trial depends on the complexity, facts, and circumstances of each case.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
Are there any disadvantages of civil litigation in Uganda? If yes, then kindly give 2-3 points?
Is criminal prosecution available in Uganda for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Which is the responsible authority in Uganda corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
A) Responsible Authority - High Court
B) Imprisonment Term – Trademark: 02 to 05 years; copyright: 02 to 04 years
C) Monetary Fine – Trademarks: not exceeding 48 to 120 currency points; copyright: 25 to 200 currency points
Are there any other criminal remedies available in Uganda than the ones mentioned above? If yes, then kindly explain in brief.
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
Are there any disadvantages of criminal prosecution in Uganda? If yes, then kindly give 2-3 points?
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
The courts are using Alternative Dispute Resolution measures, such as mediation to settle disputes. Other disputes are referred for arbitration.
Are border control measures (customs) available in Uganda for the enforcement of IPRs?
No, but an applicant/IP rights holder may lodge an application with the court or any other competent authority to seize goods which are considered to be infringing.
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
What are the remedies available under border control measures (customs) in Uganda?
As per section 71 of the trademarks act, any person with an intention to defraud or to enable another to defraud any person, forges or counterfeits a trademark, commits an offence and is liable on conviction to a fine or imprisonment not exceeding 02 years or both.
Who must bear the costs of customs intervention during enforcement?
The applicant must bear the costs of customs intervention during enforcement.
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
The competent authority may decide in furtherance of detention of allegedly infringing goods and release the goods from detention if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Which are the best practices for enforcement of IPRs in Uganda?
Are there any risks involved in the enforcement of IPRs in Uganda? If yes, then kindly give 2-3 points.
The risks involved in the enforcement of IPRs in Uganda are as follows:
Consultation and legal fees may not be affordable to persons whose rights have been allegedly infringed upon and yet require legal advice. This denies such persons the access to legal services.
The area of intellectual property is technical and requires skill and expertise, which an ordinary person does not have. This requires the services of a lawyer who has specialization in the area of intellectual property, but these are a few only.