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Enforcement of IPRs in Uganda


Enforcement of IPRs
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.
Drugs and apparel are the goods that most often face counterfeiting and piracy in Uganda.
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.
Trademarks, Copyright and Neighbouring Rights, and GIs are the different types of IPRs protected by IPR enforcement 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.
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.
*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.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes/tr>
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Other civil remedies are as follows:
  • Anton pillar orders
  • The Trademarks Act 2010;
  • Damages
  • TOrders to expunge or vary any entry in the trademark registry
  • An account for profits, delivery up, and costs of the suit
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.
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
The courts are using Alternative Dispute Resolution measures, such as mediation to settle disputes. Other disputes are referred for arbitration.
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.
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.
The applicant must bear the costs of customs intervention during enforcement.
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.
Court Proceedings
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.