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ACTS SUPPLEMENT No. 7 3rd September, 2010. ACTS SUPPLEMENT to The Uganda Gazette No. 53 Volume CIII dated 3rd September, 2010. Printed by UPPC, Entebbe, by Order of the Government. Act 17 Trademarks Act 2010 THE TRADEMARKS ACT, 2010. ARRANGEMENT OF SECTIONS. Section. Part I—Preliminary.
Part II—Register of Trademarks.
Part III—Procedure For And Duration of Registration
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1 |
Act 17 |
Section. 23. 24. 25. 26. 27. 28. 29. 30. 31. 32. 33. |
34. 35. 36. 37. 38. 39. 40. 41. 42. 43. 44. 45. |
46. 47. 48. |
Trademarks Act 2010 |
Restriction on registration. Saving in respect of use of name, address or description of goods or services. Prohibition of registration of identical and resembling trademarks. Application for registration of identical or resembling trademarks. Concurrent use. Status of trademarks removed from the register. Associated trademarks. Series of trademarks. Rights and exception of assignment, licensing and transmission of trademarks relating to goods or services. Certain trademarks to be associated so as to be assignable as a whole. Registration of assignments and transmission. Part IV—Effect of Registration And the Action For Infringement No action for unregistered trademark. Passing off. Rights given by registration of goods in Part A and infringement. Rights given by registration of services in Part A and infringement. Rights given by registration of goods in Part B and infringement. Rights given by registration of services in Part B and infringement. Infringement by breach of certain restrictions. Saving of rights. Words used as name or description of an article or substance. Words used as name or description of an activity. Protection of marks registered in a country of origin. Removal of trademark from register on proof of prior registration in country of origin. Part V—Use And Non-Use of A Trademark or Service Mark. Removal from register and imposition of limitations on ground of non-use. Defensive registration of trademarks relating to goods or services. Removal of defensive trademarks from the register. |
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Act 17 Section. 49. 50. 51. 52. 53. 54. 55. 56. |
57. 58. 59.
63. 64. 65.
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68. 69. 70. |
71. 72. 73. 74. 75. 76. 77. |
Trademarks Act 2010 |
Permitted user. Variation or cancellation of registration as a registered user. Notification of registration as registered user and or application for variation or cancellation of the registration. Registrar’s decision under section 54 and 55 subject to appeal. Proposed use of trademark by corporation to be construed. Use of one of associated or substantially identical trademark equivalent to use of another. Use of trademark for export trade. Use of trademark after change in form of trade connection. Part VI—Legal Proceedings And Appeals. Power of registrar to award costs. Registration to be prima facie evidence of validity. certificate of validity. Trade usage, etc. to be considered. Registrar’s appearance in proceedings involving rectification. court’s power to review registration. Procedure in case of option to apply to court or registrar. Payment of costs by the registrar. Security of costs. Powers of court on appeal. Chief Justice to make rules of procedure. Part VII—Evidence. Mode of giving evidence. Evidence of entries in register. Evidence of entries made or of things done by the registrar. Part VIII—Offences. Forging or counterfeiting trade mark Falsification of entries in register. Falsely representing a trademark as registered. Falsifying or unlawful removal of a registered trademark. Falsely applying a registered trademark. Manufacture and possession of dye etc for use in commission of offence. Selling etc goods with false marks. |
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Act 17 Trademarks Act 2010 Section.
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Part IX—Miscellaneous |
81. |
Penalties and compensation. |
82. |
Inspectors. |
83. |
Entry into premises. |
84. |
Mode of inspection of premises. |
85. |
Inspectors or public officers not personally liable. |
86. |
Suspension of release by customs authorities. |
87. |
Fees. |
88. |
General power to rectify entries in register. |
89. |
Power to expunge or vary registration for breach of condition. |
90. |
Correction of register. |
91. |
Alteration of registered trademark |
92. |
Adaptation of entries in register to amend or substitute classification of goods or services. |
93. |
Recognition of agents. |
94. |
Address for service. |
95. |
Hours of business and excluded days. |
96. |
Provisions as to public holidays. |
97. |
Power of Minister to make regulations. |
98. |
Minister’s power to amend Schedule. |
99. |
Repeal and savings. |
SCHEDULE |
Currency point |
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Act 17 |
Trademarks Act |
2010 |
THE TRADEMARKS ACT, 2010 An Act to consolidate the law relating to trademarks; to repeal and replace the Trademarks Act; to provide for the appointment of a registrar; for the registration of trademarks; for the procedure for and duration of registration; for the effect of registration and action for infringement of a trademark; for the use and non use of a trademark; for fees; for legal proceedings and appeals; for trademark offences; for regulations and for related matters. Date of Assent: 9th August, 2010. Date of Commencement: 3rd September, 2010. Be it enacted by Parliament as follows— Part I—Preliminary
“assignment” means assignment or transfer of rights and liabilities under this Act; “board’’ the board of directors established under the Uganda Registration Services Bureau Act; “certification mark” means the mark referred to in section 13; “court” means the High Court; “currency point” has the meaning given to it in the Schedule; |
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Act 17 Trademarks Act 2010 “limitation” means any limitation of the exclusive right to the use of a trademark given by the registration of a person as owner of the trademark, including limitation of that right as to mode of use, in relation to goods to be sold or otherwise traded in, in any place in Uganda, or in relation to goods to be exported to any market outside Uganda; “Minister” means the Minister responsible for justice; “passing off” means falsely representing one’s own product as that of another in an attempt to deceive potential buyers; “permitted use” has the meaning assigned to it by section 49 (2); “register” means the register of trademarks kept under section 2; “registered trademark” means a trademark that is registered under Part Ill of this Act; “registrar” means an officer designated as registrar of trademarks under the Uganda Registration Services Bureau Act; “sign or mark” includes any word, symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of them; “surname” means a name by which a person is customarily known by members of the community to which he or she belongs; “trademark” means, a sign or mark or combination of signs or marks capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking; “transmission” means devolution by operation of law, devolution on the personal representative of a deceased person or any other mode of transfer not being an assignment. |
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Act 17 Trademarks Act 2010 (2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark. Part II—Register of Trademarks.
descriptions of their owners;
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Act 17 |
Trademarks Act |
2010 |
Part III—Procedure And Duration of Registration
A person who intends to apply for the registration of a trademark shall carry out a search to ascertain whether the trademark exists in the register upon payment of a prescribed fee.
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Act 17 |
Trademarks Act |
2010 |
conditions or limitations, as he or she may deem fit.
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Act 17 Trademarks Act 2010
special or particular manner;
predecessor in his or her business;
quality of the goods or services, and not being according to its ordinary signification, a geographical name or a surname; or
words, other than words within the descriptions in paragraphs (a), (b), (c) and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.
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Act 17 Trademarks Act 2010 |
relation to the goods in respect of which the trademark is registered or proposed to be registered, to distinguish goods with which the owner of the trademark is or may be connected, in the course of trade, from goods in the case of which no connection subsists; or
to services in respect of which the trademark is registered or proposed to be registered, to distinguish services with which the owner of the trademark is or may be connected in the course of trade, from services with the provision of which he or she is not connected, generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
services; and
circumstances, the trademark is in fact adapted to distinguish goods or services.
Part B.
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Act 17 |
Trademarks Act |
2010 |
or services; and
circumstances, the trademark is in fact capable of distinguishing goods or services.
publish. |
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Act 17 Trademarks Act 2010
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13 |
Act 17 Trademarks Act 2010 |
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14 |
Act 17 |
Trademarks Act |
2010 |
services in relation to the goods or services in question; and
the mark is in fact adapted to distinguish goods or services in relation to the goods or services in question.
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Act 17 Trademarks Act 2010
services in respect of which the mark is to be registered;
would be to the public advantage; and may either—
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Act 17 |
Trademarks Act |
2010 |
certification marks.
notice of the objection has expired; or
been decided in favour of the applicant, the registrar shall, unless the application has been accepted in error, register the trademark in Part A or Part B, and the trademark, when registered, shall be registered from the date of the application for registration and that date shall be taken to be the date of registration. |
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Act 17 Trademarks Act 2010 |
entry in register relating to certification mark.
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Act 17 Trademarks Act 2010
the registrar or the court, in deciding whether that trademark shall be entered or shall remain on the register, may require, as a condition of its being on the register— |
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Act 17 Trademarks Act 2010
those persons may be registered as joint owners of the trademark and this Act shall have effect in relation to any rights to the use of the trademark vested in those persons as if those rights had been vested in a single person.
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Act 17 Trademarks Act 2010
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Act 17 Trademarks Act 2010 |
goods or services. The registration of a trademark shall not affect—
trademarks.
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Act 17 Trademarks Act 2010
the registrar or the court, in deciding whether the trademark shall be entered or shall remain on the register, may require, as a condition of its being on the register—
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Act 17 Trademarks Act 2010
The registrar or court may permit the registration by more than one owner, in a case of honest concurrent use or other special circumstances in respect of—
that has been removed during the two years immediately preceding its removal; or
the use of the trademark that is the subject of the application for registration by reason of previous use of the trademark that has been removed. |
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Act 17 |
Trademarks Act |
2010 |
the registrar may, at any time, require that the trademarks be entered on the register as associated trademarks.
the registrar may at any time require that the trademarks be entered on the register as associated trademarks.
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Act 17 Trademarks Act 2010
the trademarks may be registered as a series in one registration.
transmission of trademarks relating to goods or services.
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Act 17 Trademarks Act 2010 |
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Act 17 Trademarks Act 2010 |
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Act 17 Trademarks Act 2010
a whole. Trademarks that are registered as or that are taken to be associated trademarks by virtue of this Act, shall be assignable and transmissible only as a whole and not separately, but they shall for all other purposes be taken to have been registered as separate trademarks.
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Act 17 Trademarks Act 2010 Part IV—Effect of Registration And Action for Infringement |
A person may not institute proceedings to prevent or to recover damages for an unregistered trademark.
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 or the remedies in respect of the right of action.
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Act 17 Trademarks Act 2010 |
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Act 17 |
Trademarks Act |
2010 |
infringement.
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Act 17 |
Trademarks Act |
2010 |
infringement.
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Act 17 Trademarks Act 2010 |
infringement.
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Act 17 |
Trademarks Act |
2010 |
the obligation, does act or authorises it to be done, in relation to the goods or services, in the course of trade or with a view to any dealing in the course of trade, the purchaser or owner of the goods or services shall be taken to infringe the right to the use of the trademark given by registration.
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Act 17 Trademarks Act 2010 |
Nothing in this Act shall entitle the owner or a registered user of a registered trademark to interfere with or restrain the use by a person of a trademark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title has continuously used that trademark from a date before—
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Act 17 Trademarks Act 2010
subsection (3) shall have effect.
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Act 17 Trademarks Act 2010 |
shall be taken to have ceased on the date at which the use mentioned in subsection (1) first became well known and established or at the expiration of the period of two years referred to in subsection (2)(b).
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Act 17 |
Trademarks Act |
2010 |
shall be taken to have ceased on the date at which the use mentioned in subsection (2) first became well known and established. |
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Act 17 |
Trademarks Act |
2010 |
in a country or place from which the goods originate.
in a country or place from which the services originate.
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40 |
Act 17 Trademarks Act 2010 |
registration in country of origin.
in a country or place from which the goods originate.
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Act 17 |
Trademarks Act |
2010 |
in a country or place from which the services originate.
and does not give an undertaking to the satisfaction of the registrar that he or she will within three months from the making of the application under this section apply for registration in Uganda of the trademark so registered in the country or place of origin and will take all necessary steps to complete the registration. |
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Act 17 |
Trademarks Act |
2010 |
Part V—Use And Non-Use of a Trademark.
ground of non-use.
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Act 17 Trademarks Act 2010 |
the registrar may refuse an application made under subsection (1) in relation to goods or services, if it is shown that there has been, before the relevant date or during the relevant period bona fide use of the trademark by an owner in relation to goods of the same description, being goods in respect of which the trademark is registered.
on application by that person to the court and subject to section 68, to the registrar, as the case may be, the court or registrar may impose on the registration of the trademark limitations as the court or the registrar thinks proper for securing that the registration shall cease to extend to the use of that trademark.
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Act 17 |
Trademarks Act |
2010 |
on application by that person to the court and subject to section 69, to the registrar the court or registrar may impose on the registration of the trademark limitations as the court or the registrar thinks proper for securing that the registration shall cease to extend to the use of that trademark.
services.
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45 |
Trademarks Act 2010 |
that the use would not be likely to be taken as indicating a
that the owner registered in respect of the goods or services
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46 |
Act 17 (a) |
(b) |
Act 17 Trademarks Act 2010 registration in respect of any goods or services otherwise than as a defensive trademark notwithstanding that it is already registered in his name in respect of those goods or services as a defensive trademark, in place of the existing registration.
(1) on application to the court by an aggrieved person and subject to section 63, to the registrar—
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Trademarks Act 2010 |
as regards any services or goods in respect of which it is registered as a defensive trademark on the ground that there is no longer any likelihood that the use of the trademark in relation to those services or goods would detract from its distinctive character in respect of the services in section 51(1).
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Act 17 |
(ii) |
48 |
Act 17 Trademarks Act 2010 |
(i) any conditions or restrictions proposed with respect to the characteristics of the goods or services, to the mode or place of permitted use or to any other matter;
together with further documents, information or evidence as may be required by the regulations or by the registrar.
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49 |
Act 17 |
Trademarks Act |
2010 |
proper, would not be contrary to the public interest, the registrar may register the proposed registered user as a registered user in respect of the goods or services as to which he or she is satisfied.
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50 |
Act 17 |
Trademarks Act |
2010 |
application for variation or cancellation of the registration. The registrar shall—
A person aggrieved by the decision of the registrar under sections 50 and 51 may appeal to the court.
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51 |
Act 17 |
Trademarks Act |
2010 |
equivalent to use of another.
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52 |
Act 17 Trademarks Act 2010 |
The application in Uganda of a trademark relating to goods or services to be exported from Uganda and any other act done in Uganda in relation to goods or services to be so exported which, if done in relation to goods or services to be sold or otherwise traded in within Uganda would constitute use of a trademark, shall be taken to constitute use of the trademark in relation to those goods or services for any purpose for which the use is material under this Act.
Part VI—Legal Proceedings And Appeals.
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53 |
Act 17 Trademarks Act 2010 |
In all legal proceedings relating to a registered trademark including applications under section 78 the fact that a person is registered as owner of the trademark is prima facie evidence of the validity of the original registration of the trademark and of all subsequent assignments and transmissions.
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54 |
Act 17 Trademarks Act 2010
The court, in dealing with any question of the rectification of the register including all applications under section 79, may review any decision of the registrar relating to the entry in question or the correction sought to be made.
In all proceedings before the court under this Act, the costs of the registrar shall be at the discretion of the court but the registrar shall not be ordered to pay the costs of any of the parties.
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Act 17 Trademarks Act 2010
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the registrar may require the person to give security for costs of the proceedings and may, if security is not given dismiss the proceedings.
Where the court hears an appeal for a decision of the registrar under this Act, the court may without prejudice to any other powers conferred on it by this Act—
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Act 17 |
Trademarks Act |
2010 |
Part VII—Evidence.
A certificate purporting to be signed by the registrar as to an entry, matter or thing that he or she is authorised by this Act to make or do, is prima facie evidence of the entry having been made and of the contents and of the matter or thing having been done or not been done. Part VIII—Offences.
Any person who with intention to defraud or to enable another to defraud any person, forges or counterfeits a trade mark commits an offence and is liable on conviction to a fine not exceeding forty eight currency points or imprisonment not exceeding two years or both. |
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Act 17 |
Trademarks Act |
2010 |
Where a person makes or causes to be made a false entry in the register, a writing falsely purporting to be a copy of an entry in the register, produces, tenders, causes to be produced or tendered in evidence the writing, knowing the entry or writing to be false, he or she commits an offence and is liable on conviction to a fine not exceeding one hundred currency points or imprisonment not exceeding five years or both.
A person who makes a representation—
commits an offence and is liable on conviction to a fine not exceeding one hundred currency points or imprisonment not exceeding five years or both.
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Act 17 Trademarks Act 2010 knowing that the trademark is registered or reckless whether or not the trademark is registered, commits an offence and is liable on conviction to a fine not exceeding one hundred and twenty currency points or imprisonment not exceeding five years or both.
without the permission of the registered owner or an authorised user of the trademark, and without being required or authorised to do so by this Act, or without direction from the registrar or an order of a court.
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Act 17 Trademarks Act 2010 commits an offence and is liable on conviction to a fine not exceeding one hundred and twenty currency points or imprisonment not exceeding five years or both.
of offence.
commits an offence.
commits an offence.
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Act 17 Trademarks Act 2010
knowing that or reckless whether or not, the dye, block, machine, instrument, computer, device or representation is likely to be used for or in the course of committing an offence against sections 74 or 75 commits an offence.
A person who intentionally sells goods, exposes goods for sale, has goods in his or her possession for the purpose of trade or manufacture, imports goods into Uganda for the purpose of trade or manufacture or exports goods for purposes of trade or manufacture, knowing that or reckless whether or not
commits an offence and is liable on conviction to a fine not exceeding forty eight currency points or imprisonment not exceeding two years or both.
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61 |
Act 17 Trademarks Act 2010
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62 |
Act 17 |
Trademarks Act |
2010 |
Part IX—Miscellaneous
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63 |
Act 17 Trademarks Act 2010
subject to this Act, an inspector may, at any reasonable time and on production of his or her certificate of authority, enter any premises, ship, aircraft or vehicle for the purpose of ascertaining whether there is or has been, on or in connection with those premises, ship, aircraft or vehicle any contravention of this Act.
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64 |
Act 17 Trademarks Act 2010
commits an offence and is liable on conviction, to a fine not exceeding forty eight currency points or imprisonment not exceeding two years or both. |
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Act 17 Trademarks Act 2010 |
An inspector or public officer shall not be personally liable for an act done in good faith by him or her in the course of his or her employment and in the execution or purported execution of any duty under this Act.
There shall be paid in respect of applications, registration and other matters under this Act such fees as may be prescribed by the Minister
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66 |
Act 17 |
Trademarks Act |
2010 |
On application by a person aggrieved to the court, and subject to section 64, to the registrar or on application by the registrar to the court, the court or the registrar may make such order as the court or the registrar may think fit for expunging or varying the registration of a trademark on the ground of a contravention of or failure to observe a condition entered on the register in relation to the trademark.
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Act 17 Trademarks Act 2010 |
classification of goods or services.
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68 |
Act 17 Trademarks Act 2010
Where under this Act an act is to be done by or to a person in connection with a trademark or proposed trademark or a procedure relating to the trademark, the act may under and in accordance with the regulations, be done by or to an agent of that person duly authorised in the prescribed manner. 69 |
Act 17 |
Trademarks Act |
2010 |
Where an applicant for the registration of a trademark or an agent does not reside or carry on business in Uganda he or she shall give the registrar an address for service in Uganda and if he or she fails to do so the registrar may refuse to proceed with the application until the address has been given.
Where the last day fixed by this Act or by any regulations for the time being in force, for leaving a document with or paying a fee to the registrar falls on Sunday or a public holiday, it is lawful to leave the document or to pay the fee on the day next following that Sunday or public holiday or holidays, if two or more of them occur consecutively.
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Trademarks Act 2010 |
classifying goods for the purposes of registration of
making or requiring duplicates of trademarks and other
securing and regulating the publishing and selling or
generally regulating the business of the registrar in relation
prescribing for the contravention of the regulations a
The Minister may with approval of cabinet, by statutory instrument, amend the schedule to this Act.
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Act 17 (b) (c) (d) (e) (f) |
Act 17 Trademarks Act 2010
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Act 17 Trademarks Act 2010 SCHEDULE ss.1, 102 CURRENCY POINT One currency point is equivalent to twenty thousand shillings. |
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Act 17 Trademarks Act Cross references
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2010 |
74 |