Opinion: Trademark Registration, Use Of Marks In Foreign Language
By Mercy K. Kainobwisho
My attention has been drawn to the article in the media by Ms. Damalie Tibugwisa Ntende of Muwema & Co Advicates regarding trademark registration in the USA regarding the word “Mr. Matooke” in 2016 . The same article was tagged to my Facebook wall and also sent to me by many clients via whatsup. I wish to respond as follows :
- A trademark is any word, symbol, design, logo, sound, smell, phrase, slogan or a combination thereof that identifies and distinguishes goods and services of one entity from those of another (competitor). Examples are MTN, UTL, Coca-Cola, Kazaire, Rwenzori, Numa, etc….
- The purpose of trademarks is mainly to distinguish goods and services, safeguard goods and services from infringement but also to protect consumers from confusion and deception especially where trademarks are similar or misleading.
- Trademark law has its roots in international law agreements, Protocols and treaties including the Paris Convention of 1883 and TRIPS Agreement of 1995 among others.
- Under the said Regional and international registration systems, you can make one application and designate countries where you want your mark protected. These are universally accepted standards and practices.
- To protect your trademark locally, you have to file your application with the National Intellectual Property Office and in the case of Uganda it is the Uganda Registration Services Bureau (www.ursb.go.ug). If you want to protect your trademark beyond your country borders, you have to apply separately to the countries where you want protection or you can use the regional system e.g. the Banjul Protocol or the international system (the Madrid Protocol).
- It is in order to register a trademark in a foreign language as long as you submit the translated version of that word for purposes of establishing the meaning and if it passes the examination criteria then it will be registered. Even when the trademark is a bit suggestive, it can be registered in another part of the register for “weak” marks (Part A and Part B of the register).
- Generally, any trademarks in any language can be protected as long as a translation and transliteration has been provided by the applicant, to determine whether they are descriptive, distinctive or generic. This is in line with the doctrine of foreign equivalents. Some foreign language marks can be appealing and presumed to be coined words.
- Whereas the word “Matooke” is well known in some parts of Uganda and is used to describe a variety of banana, it may not be detected easily as a foreign word from Uganda since this is not a common language. It may also have a different meaning in any other language. Registration thereof doesn’t take away the proprietary right in the products itself.
- Under the Trademark Law of Uganda, the word ” Matooke” as presented cannot qualify to be register for bananas for example because it is descriptive and not distinctive unless it is otherwise and yet the same word “Matooke” can be registered for unrelated goods e.g. Computers, accessories, cars, newspapers, watches etc as an arbitrary mark like it is the case for “Apple” trademark for computers and related products. Trademark registration follows different classification and the international classification which we use has 45 classes for all products and services (NICE Classification of goods and Services, 11th Edition).
- Every State has its own trademarks registration laws that spell out the procedure of filing, examination, publication, opposition, registration, cancellation, revocation, renewal and enforcement of trademarks though all WTO member states have minimum standards set under the Trade Related Aspects of Intellectual Property Rights Agreement of 1995 (TRIPS) . What is registrable in the US may not be registrable in Uganda. Trademarks in the US like other jurisdictions are entitled to common law protection but registering them gives them additional benefits and remedies.
- A trademark registration has no effect on other countries and stops at the border of the country where it is protected. This means that Registration of a trademark in one country doesn’t have any affect in another country because of the principle of territoriality. Therefore the conditions for filing and registration are determined by each country’s domestic laws. This is why it is difficult and not practical for Countries to monitor applications and registration made in other countries unless a centralized electronic database put in place for all registered marks in the world.
- The acceptability of a trademark application may differ from country to country but generally what has to be established is whether the mark is confusingly similar to what is already registered, whether it describes the goods (descriptive) or suggestive or scandalous or offensive or against any public order and morality, among others.
- Whereas we recognize the need to protect indigenous/cultural knowledge, trademarks do not protect indigenous knowledge, values or functionality per se but the identity of that product and service unless the mark used has a certain cultural significance and its use would negatively affect a particular community. Due to our diversity, some words may also mean different things in different jurisdictions.
- For instance, some countries do not accept registration of marks that are not in English language and any mark that is not in English requires a translation.
- And if this particular matter referred to in the article is about the use of a local language /word – what will other countries whose indigenous language is English say? Will they object to all mark registrations in English?
- Beyond the language issue, if that particular alleged mark causes commercial loss, loss of reputation, cultural value or infringes on another registered mark or affects trade, importation and business dealings, any aggrieved party can apply for its cancellation. We know that “bad faith” or “free -riding” registrations are common these days. In this particular case the aggrieved party can apply to the US patent office for cancellation.
- And if a foreign registered trademark concerns or affects National identity , signs and assets or polo all connotations , it is advisable that the Ministry responsible for Foreign affairs takes it on and may engage Embassies or Permanent Missions to pursue the matter and related reciprocal arrangements.
- Beyond registration of words, the conversation should shift to how our country can use branding to create and add value to agricultural products; improve quality, commercialization and utilization of the same in order to be more competitive.
The writer is an Intellectual Property and Business Law Specialist