Islamic university in Uganda

Intellectual property presentation

Edgar odudi 120-053011-21413

Question 1. Defined a distinctive mark.

Generally, a distinctive mark can be referred to various identifying characteristics or features that
distinguish one thing from another. Under intellectual property law, these marks are used to identify and
distinguish the goods or services of one seller or provider from those of others. they are legally registered
to represent a specific product, service, or company for example brands and logos which are unique
designs associated with a particular brand or company, trademarks, which are distinctive marks or
symbols legally registered to represent a specific product, service or company, color schemes for instance
the consistent use of specific colors associated with a brand or product. . Here are some of the types of
distinctive marks recognized under intellectual property law:

 Trademarks
 Certification Marks
 Collective Marks
 Service Marks
 Trade Dress

Trade Dress: Trade dress refers to the visual appearance or packaging of a product that distinguishes it
from other products in the marketplace. It can include features such as colors, designs, shapes, or
packaging materials.

Certification Marks: Certification marks are used to indicate that goods or services meet certain
standards or qualifications set by an independent organization or authority. They are used to certify the
quality, origin, or other characteristics of the goods or services. They are usually given for compliance
with defined standards, but are confined to any membership. They may be used by anyone who can
certify that the products involved meet certain established standards. S.131 defines a certification mark as
a mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by a person
in respect of origin, material, mode of manufacture, quality, accuracy or other characteristics from goods

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Trademarks Act 2010
not certified. S.13 (2) a mark shall not be registrable as a certification mark in the name of a person who
carries on a trade in goods of the kind certified. An important requirement for certification marks is that
the entity which applies for registration is considered competent to certify the products concerned.

Collective Marks: Collective marks are trademarks or service marks that are used by members of a
cooperative, association, or other collective group to identify their goods or services. They distinguish the
goods or services of the members from those of non-members. . It’s usually owned by an organization
whose members use it to identify themselves with a level of quality or accuracy, geographical origin, or
other characteristics set by the organization. It should be noted that, collective trademarks are exceptions
to the underlying principle that trademarks serve as badges of origin they indicate the individual source of
the goods or services. A collective trademark on the other hand, can be used by a variety of traders, rather
than just one individual concern, provided that the trader belongs to the association.

Trademarks: Trademarks are distinctive signs, symbols, logos, words, or phrases that are used to
identify and distinguish the goods of one manufacturer or seller from those of others. They can be
registered with the appropriate intellectual property office to obtain legal protection against unauthorized
use by others.

Service Marks: Service marks are similar to trademarks but are used to identify and distinguish the
services of one provider from those of others. Service marks can include logos, slogans, or other
identifiers associated with specific services.

Under intellectual property law, distinctive marks are protected to prevent confusion among consumers
and to ensure that consumers can easily identify the source of goods or services. The unauthorized use of
distinctive marks may constitute trademark infringement or dilution, which can lead to legal action and
potential damages. Trademark registration provides stronger legal protection for distinctive marks and
enables owners to enforce their rights more effectively. The primary distinctive marks are trademarks and
service marks.

Trademarks (™)

A formal definition of the term trademark could be that it is a sign that individualizes the goods of a given
enterprise and distinguishes them from the goods of its competitors. Alternatively, a trademark is any sign
or mark that distinguishes the goods or services of one undertaking from those of another undertaking.
Section12 of the defines a trademark as assign or mark or combination of signs or marks capable of being
represented graphically and capable of distinguishing goods or services of one undertaking form those of
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Trademarks Act 2010
another undertaking it may consist of any word, symbol, design, slogan, logo, sound, smell, color, label,
name, signature3, letter, numeral or any combination of them and should be capable of being represented
graphically for example The Coca-Cola Company ® PepsiCo, Inc.(R). As a characteristic, the Trademark
has to be distinctive and non-descriptive hence not likely to cause confusion. It should be noted that the
Trademark owner has the exclusive rights to prevent others from using the same or confusingly similar
mark. Registration of a trademark gives the owner an exclusive right to use the registered mark on the
goods or services for which it is registered. The owner of a registered mark can sue for infringement of
his registration if someone else uses the same or a similar mark on the same or similar goods or services
for which the mark is registered. Thus, a trademark identifies the source of products and fixes
responsibility for its quality. It is necessary to say that a service mark is similar to a trademark; the only
differentiating factor is that the latter protects goods, while the former protects services. Generally
speaking, the term trademarks include both trademark and services marks.

The procedure and duration of registration of a trademark is provided for under part III of the trademarks
act4. A trademark can be registered if it is able to distinguish the goods or services on an entity, will not
confuse consumers about the relationship between one party and another, and will not otherwise deceive
consumers with respect to the quality of the product. Under Section 6 (1)5, A person who intends to apply
for the registration of a trademark may obtain advice from the registrar as to whether the proposed
trademark appears to be registrar to be inherently adapted to distinguish or capable of distinguishing
goods or services of the proposed undertaking from t hose of other undertakings and the registrar shall
advice accordingly. Under Section 7 (1) A person who claims to be the owner of a trademark used or
proposed to be used by him or her and is desirous of registering it shall apply in writing to the registrar in
the prescribed form for registration in Part A or Part B of the register. The mark must be sought to be
registered in respect of particular goods Section 7(1) of the Act 6requires that registration be in respect of
particular goods classes of goods. In Arsenal Vs Reed (2003) RPC 9 ECJ, it was stated that a trademark
had to guarantee that all goods and services bearing the mark had been manufactured or supplied under
the control of a single undertaking which was responsible for the quality of the goods or services.

In Uganda registration may be secured under part A OR B depending on the nature and character of the
goods. Registration under part A depends on whether the mark is distinctive in itself. Under part A, it may
relate to the quality or any other characteristics of the goods. In all cases, a mark should not be capable
of or likely to contuse or deceive the public if compared to existing marks. Section 9(1) provides for the

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see for example the popular signature of Arthur Guinness
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Section 7 of the Trademarks Act 2010.
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Trademarks Act 2010
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Trademarks act 2010
particulars in order for a trademark to be registered in Part A of the register 7. According to Section 10 the
capability of distinguishing is requisite for registration under part B. Under Section10, a trademark
relating to goods to be registered in Part B of the register shall be capable in relation to the goods in
respect of which it is registered or proposed to be register, of distinguishing goods with which the owner
of the trademark is or may be connected in the course of trade from goods in the case where no
connection subsists, generally or, where the trademark is registered or proposed to be registered subject to
limitations in relation to the use within the extent of the registration. Section 10 (2) a trademark relating
to services to be registered in Part B of the register shall be capable, in relation to services in respect of
which this registered or proposed to be registered, of distinguishing services with the provision of which
the owner of the mark is or may be connected in the course of business form services with the provision
of which he or she is not so connected generally or where the trademark is registered or proposed to the
registered subject to limitations in relation to use within the extend of the registration.

Evidence of ownership of the Trademark

A certified copy of the certificate of the trademark can be used to show representation of the mark, the list
of goods or services, the date of registration and the name of the trademark holders. The evidence can
either be direct or secondary. The documentary evidence will include sales figures, photos, market
surveys or statistics and also file history.

The laws applicable to trademarks in Uganda include but not limited to the Trademarks Act 2010, The
Trademark Rules, The Paris Convention of 1883, Trademark Law Treaty, The Medrid Agreement
and Protocol (Uganda not signatory but useful for purposes of illustration), The TRIPS Agreement,
1994, NICE Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (NICE).

Question 3. Defined a defensive mark.

This is a trade mark applied for by a trademark owner of a well-known trademark for goods or services
that are not intended to be used by that owner.

The purpose of filling a defensive mark is to reduce the possibility of other traders using the trademark
for unrelated goods or services because the use of the trademark by a third party may cause confusion in
the market place.

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(a) The name of a company, individual or firm, represented in a special or particular manner,(b) The signature of the applicant for registration or of some
predecessor in his or her business, (c) An invented word(s), (d) A word or words having no direct reference to the character or quality of the goods or services,
and not being according to its ordinary signification, a geographical name or a surname, or (e) Any other distinctive mark but a name, signature or word or words,
other than words within the descriptions in paragraphs (a) (b) (c) and (d) are not registrable except upon evidence of its distinctiveness.
An example can be that the owner of Samsung trademark widely known for electronics may register that
same mark for other goods or services which may be plastics, beverages among others in order to prevent
others from using the mark.