FIRM: FIRM C3

W. SHOP: WORKSHOP ONE

SUBJECT: CORPORATE AND COMMERCIAL
PRACTICE
TERM: TWO
MODULE: FOUR
 Task 1
Brief facts
Dolibondo co Ltd deals in the manufacture of kombucha drink under the name
kobio. The director of Dolibondo wants to protect his name kabio from being used
by other manufacturers of kombucha drink in western Uganda.

Issue 1
Whether kabio can be registered as a trademark
S. 1 of the Trade Marks Act defines a trademark to mean a sign or a mark or
combination of signs or marks capable of distinguishing goods and services from
those of another undertaking.
A trademark was also defined in the case of Nice House Plastics ltd v Hanid
Lubega HCT-00-CC-CS-0695-2006, as a word, phrase, symbol, product feature,
or any combination of these that distinguishes in commerce the goods or services
of the owner from those of others.

What constitutes a trademark is provided for under s. 4 of the act to include a

sign or combination of signs capable of distinguishing goods from another
undertaking. Where assign does not inherently distinguish the goods, its
registration shall depend on its distinctiveness acquired through use.
In the present facts, ‘KABIA’ qualifies as a trademark that falls within class 33 of
the goods in the third schedule and therefore registerable

The procedure for registration.

STEP 1:
A person who intends to apply for the registration of a trademark shall search to
ascertain whether the trademark exists in the register upon payment of a prescribed
fee.
Section 5 trade mark act 2010, provides that a person who intends to apply the
regulation of a trade mark shall carry out a research to ascertain whether the
trademark exists
To this end, section 25 (1) trade prohibits the registrar from registering two
identical and resembling trademarks.
Therefore, Dolibondo must make research that there is no similar trade mark by
applying to the registrar through form 27
STEP 2:
Request for the registrar’s preliminary advice as to distinctiveness of the trade
mark.
Section 6(1) trademark act Provides that a person who intends to apply for the
registration of the trademark may obtain advice from registrar as whether the
provided trade mark appear to the registrar to be inherently adapted to
distinguishing or capable to distinguish goods or services of the proposed
undertaking from those of other undertaking
In Chan Kyaninga Royal Cottages Ltd Vs Kyaninga Estates Ltd Vs Kyaninga
Lodge 4.C. M.S.C. App No 808/2020
Court noted that in determining a trade mark one of the elements for consideration
is distinctiveness as distinctiveness is a requirement for one to register a particular
trade mark since such distinctive trade mark or name helps to distinguish goods of
the trade mark owner from other goods

Section 9(1) trade mark act is the effect that a trade mark shall contain at least one
of the following essential particular if it is to be registered under part A of the
registrar
a). the name of the company, individual or firm represented in a particular manner
b). the signature of the applicant of the registration
c). an invented word /words having no direct reference or character of the goods
/services and not being a geographical name
d). any other distinctive mark.

Step4
A trademark application is then filed upon payment of application fees. The
application should contain the mark proposed to be used, the class of goods or
services, the name, address and the signature of the applicant. If the applicant is a
foreign company, a Power of Attorney or Form of Authorization (TM no. 1) an
agent (Advocate of the High Court) will be required.
The fee amounts to 50000 as per item 1a if the schedules to the trade mark
regulations

Issue 2
What are the necessary documents?
1. The application for a search
2. Request for the registrar’s preliminary advise as to distinctiveness of the
trade mark form TM 27
3. Application for registration of a trade mark form TM 2

Issue 3
What steps should the registrar of trade mark take to effect the registration of
the trade mark
1. Cause a search to be made.
According to Reg 23(1) of the Trade marks Regulation 2012, upon receipt of the
application for registration of a trademark, the registrar shall cause a search to be
made among the registered marks and pending applications so as to ascertain
whether there are on record in respect of the same goods or services or description
of goods or services any marks identical to the mark applied for or so nearly
resembling it so as to render the mark applied to deceive or cause confusion.
In the case of Anglo Fabrics (Bolton) Ltd and Anor v African Queen Ltd and Anor
(HCT-00-CC-CS 632 OF 2006)[2008] Hon. Justice Yokokamu Bamwine stated
that likelihood of confusion is the probability that a reasonable consumer in the
relevant market will be confused of deceived and will believe the infringer’s goods
or services come from or are sponsored or endorsed by the complainant or that the
two are affiliated. Therefore in order to avoid such confusion, the register must
conduct a thorough search in the register.
The registrar of trademarks is prohibited under section 23(1) of the Act 2010 from
registering a trade mark or part of a trademark any matter the use of which would
be likely to deceive or would be contrary to law, morality or any scandalous
design.
Similarly, Section 25(1) of the Trade mark Act 2010 prohibits registration of
identical and resembling trademarks belonging to different owner and already on
the register in respect of the same goods, the same description of goods or services
or a description of services which are associated with those goods or goods of that
description.
Relating to the facts at hand therefore, the registrar is required to search in the
register to ensure that the mark intended to be registered does not resemble an
already registered mark so as to deceive or bring confusion and also ensure that
the mark is not contrary to any law, morality or it’s not a scandalous design.
 2. Publication of the application
Section 11(1) of the Act provides that where an application for registration of a
trade mark has been accepted absolutely or subject to conditions or limitations, the
registrar shall cause the application to be published in a prescribed manner for
60days and the publication shall set forth all conditions and limitations subject to
which the application is accepted.
Regulation 25(1) provides that an application for registration of a trade mark
required or permitted by section 11(1) and (2) of the Act shall be published in the
Gazette or in any other media as the registrar may direct during such times and in
such manner as the registrar may direct.
3. Enter the trademark in the register
As per Reg 43(1), the registrar shall after the expiration of 60 days from the date of
advertisement in the gazette of any application for registration of a trademark
subject to any opposition and determination of the opposition subject to 16(1) and
(2) of the Act and upon payment of a prescribed fee enter the trademark in the
register.
4. Registration of the trademark
Under section 16 of the Act, the registrar shall unless the application is accepted in
error, register the trademark and 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.
5. Issue certificate of registration
Section 16(2) of the Act provides that upon registration, the registrar shall issue to
the applicant certificate in the prescribed form of the registration signed by him or
her and under the seal of the registrar.
Regulation 46 also provides that upon registration of a trademark, the registrar
shall issue to the applicant a certificate of registration and shall affix to the
certificate a copy of the mark supplied by the applicant under regulation 18(3).

Part b
The wishes of the director can be affected by applying to court for an order that the
mark be registered for co current use since Dolibondo Co. ltd has been honestly
and concurrently using the same mark with Kasusu ltd for the last 10 years, this
has thus created distinctiveness through use.

Section 25 of the Trade Marks Act provides that Subject to section 27, a
trademark relating to goods shall not be registered in respect of goods or
description of goods that is identical with or nearly resembles a trademark
belonging to a different owner and already on the register in respect of— (a) the
same goods; (b) the same description of goods; or (c) services or a description of
services which are associated with those goods or goods of that description

However, section 27 of the Trade Marks Act provides that 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 the same goods or services.

In the case of Nairobi Java House Ltd v Mandela Auto Spares Ltd (Civil Appeal
No. 13 of 2015) [2016] UGCommC 12 court observed that the appellant had using
the trade mark since 1999 in Kenya but the application to have the mark registered
in Uganda was rejected on ground that it resembled mark of café javas which is
owned by the respondent. Court on apply noted amongst other considerations that
the two marks were capable of co-current use since the appellant had used the
mark in Kenya from 1999

GROUP 2-PART C
Brief facts
Mirongo company Ltd is the deals in the manufacture of the commonly used
concrete blocks The company has been very successful over the years due to the
use of its wellknown logo which is registered in Uganda under Class 19 with
respect to its concrete blocks. The director has been recently informed by one of
his employees that he came across a gazette and identified a mark similar the one
owned by Mirongo company limited which is sought to be registered by Bazuuka
Ltd for concrete blocks.
Issues:
1. Whether Director of Mirongo company Limited has sufficient grounds to
object to registration.
2. What is the forum procedure and documents.
3. Whether Bazuka Limited has any remedies.
4. What is the forum, procedure and documents.
5. What are the fees payable.
6. What are the ethical issues.
Resolution of Issues
Issue 1
Whether Director of Mirongo company Limited has sufficient grounds to
object to registration
The director as a registered owner of a trademark has a right to make an objection
to the registration off a similar logo by Bazuuka Ltd for concrete blocks
Under Section 12(1) of the Trade marks Act No 17 of 2010, A person may, within
the prescribed time from the date of publication of an application, give notice to
the registrar of objection to the registration
-Regulation 28 of the Trade Marks Regulations of 2012 provides that A person
may, within sixty days from the date of any advertisement in the Gazette of an
application for registration of a trademark, give notice to the registrar opposing the
registration.
Issue 2
What is the forum procedure and documents
The notice is lodged before the Registrar
Regulation 29(1) provides that The notice shall include a statement of the grounds
upon which the opponent objects to the registration
-The notice will take Form TM6 as per Regulation 28 of the Trade Marks
Regulations of 2012.
Regulation 29(2) If registration is opposed on the ground that the mark resembles
marks already on the register, the numbers of those trademarks and the numbers of
the Gazette in which they have been advertised shall be set out.
-Regulation 29(3) the notice shall be accompanied by a duplicate and the registrar
shall immediately send the duplicate to the applicant.
Documents
a. Notice to the Registrar.

Form TM 6
THE REPUBLIC OF UGANDA
THE TRADEMARKS ACT 2010.

NOTICE OF OPPOSITION TO APPLICATION FOR REGISTRATION OF

A TRADEMARK
(Under Section 12(1) of the Trade Marks Act 2010, Regulation 28 and 29
of the Trade Marks Regulations 2012)

To: The Registrar of Trademarks Kampala

IN THE MATTER OF an application No 1506 of 2023

by BAZUUKA LIMITED of ………………………..
I or (we) MIRONGO COMPANY LIMITED of ……………………… hereby
give notice of my (our) intention to register a trade mark advertised under the
above number for class 19 in the Uganda Gazzatte of the …………..day
of……..20… The grounds of opposition are as follows;
(a) The proposed logo was already registered in 2005 under the company of
Mirongo Limited
(b) Allowing Bazuuka Ltd to use the same logo will cause financial loss to
Mirongo Company Ltd
Dated this 29 day of January 2024.
…………………………………………
Applicant.

b. Duplicate
Issue 3
Whether Bazuka Limited has any remedies.
He has remedy to submit a counter statement to the registrar in support of the
registered logo to have it maintained on the register.
-Section 12(3) of the Trade Marks Act Provides that the registrar shall send a copy
of the notice to the applicant and within the prescribed time after receipt, the
applicant shall send to the registrar, in the prescribed manner, a counter statement
of the grounds on which he or she relies for his or her application and if he or she
does not do so, he or she shall be taken to have abandoned his or her application.
-Regulation 30(1) of the Trade Marks Regulations provides that Within fortytwo
days from the receipt of the duplicate, the applicant shall send a duplicate to the
registrar a counterstatement in Form TM 7 setting out the grounds on which the
applicant relies as supporting the application for registration of a trademark.
Regulation 30 (2) provides, the applicant shall also set out what facts, if any,
alleged in the notice of opposition he or she admits.
Regulation 30 (3) provides, the counterstatement shall be accompanied by a copy
of the duplicate.
Documents
a. Counter statement

Form TM 7
THE REPUBLIC OF UGANDA
THE TRADE MARKS ACT2010

FORM OF COUNTER-STATEMENT
(Under section 12(3) off the Trade Marks Act and Regulation 30(1) of the
Trade marks Regulations)
To: Registrar of Trade Marks.
P.O Box 6848, Kampala.

IN THE MATTER OF Opposition No………… to Application No………….

I, (or We) BAZUUKA LIMITED the applicant(s) for registration of the
above Trade Mark, hereby give notice that the following are the ground on
which I (We) rely in support of my (our) application:
We followed all the requirements of having the Logo registered without any
opposition from MIRONGO COMPANY LIMITED
I (We) admit the following allegations in the notice of Opposition:
………………………………………………………………………………
………………………………………………………………………………
………………………………………………………………………………
……………………………….
Address for service in Uganda in these proceedings:
…………………………………………………………………………….......
..............
 Dated this 29 day of January 2024 (a)
……………………………………………...............................................
Signature

b. The duplicate

Issue 4
What are the fees payable.
  (First schedule) Item 2
 TM6 Item 3 -100,000/=
 TM7 Item 3a-50,000/=

Issue 6
What are the ethical issues.
 Bribery
 Fraud

Brief facts

Bazuke Limited registered a trademark belonging to Mirango company limited

without its knowledge. The director of Mirongo is furious that the registrar made a
mistake to register a mark similar to theirs.

Issues

Whether there are any remedies Mirongo company limited can obtain from the
Registrar of Trademarks?

What are the necessary documents to be drafted to obtain the above remedy?

Laws applicable

The Constitution of the Republic of Uganda, 1995 as amended

The Trademarks Act, 2010

The Trademarks Regulations, 2012

The Trademarks amendment Regulations, 2021

Case Law

Resolution

Issue 1

Section 88(1) of the Trademarks Act 2010 provides that a person aggrieved by an
omission, entry, error, defect or an entry wrongly remaining on the register, may
apply in the prescribed manner to the court and subject to section 64, to the
registrar, and the court or the registrar may make an order for making, expunging
or varying the entry as the court or the registrar, as the case may be, may think fit.

Subsection 2 provides that the court or the registrar may in any proceeding under
this section decide any question that it may be necessary or expedient to decide in
connection with the rectification of the register.

Regulation 72(1) of the Trademark Regulations, 2012 provides that an application

to the register under section 88 of the act for making, expunging or varying any
entry in the register shall be made in the form 25 and shall be accompanied by a
statement setting out fully the nature of the applicant’s interest, the facts upon
which the applicant bases his or her case and the relief sought.

In the instant facts, Mirongo company limited registered its logo earlier than
Bazuka Ltd and therefore its entitled to have Bazuka’s registered trademark
expunged as provided for under Section 88(1) and (2) of the Trademarks Act,
2010.

The procedure is provided for under Regulation 72(1) of the Trademark

Regulations, 2012 where the aggrieved person shall make an application in Form
25 and accompany it with statement setting out fully the nature of the applicant’s
interest, the facts upon which the applicant bases his or her case and the relief
sought.

Issue 2

Form 25
 THE REPUBLIC OF UGANDA
IN THE MATTER OF THE TRADEMARKS ACT, 2010
Application to the Registrar for the Rectification of the Register or the
Removal of a Trade Mark from the Register.
(Regulation, 73(1))
To: Registrar of Trade Marks,
P.O. Box 6848,
Kampala.
IN THE MATTER OF the Trade Mark No. ……………………………………
registered in the name of BAZUUKE LIMITED in Class 19
I/WE MIRONGO COMPANY LIMITED hereby apply that the entry in the
Register in respect of the above-mentioned Trade Mark to be expunged from the
register.
The grounds of our application are as follows;
1. An entry into the register was made in respect of a trademark by Bazuuka
Limited. The entry in question is trademark registration number 1234
registered as of 10th December 2023. The entry is still on the register.
2. The aforementioned entry is one wrongly remaining on the register because
the mark is not distinctive and there is a likelihood of confusion in using the
mark and the applicant is the registered proprietor of the earlier marks
resembling the marks in issue.
3. The applicant is aggrieved by the registration of the latter trademark and the
non-rectification of the register keeps the applicant at a disadvantage of
having his mark confused with the later registered mark.
No action concerning the Trade Mark in question is pending in the Court.
Address for Service in the Uganda Protection in these proceedings is M/s FIRM C3
& Co. Advocates, P.O BOX 1223, MAKERERE KAGUGUBE, KAMPALA.
Dated this …………………day of ……………………………., 2024
…………………………………………………………
Applicant

A statement of the applicant

THE REPUBLIC OF UGANDA

IN THE TRADEMARKS ACT, 2010
IN THE MATTER OF TRADEMARK APPLICATION NO.___ “CONCRETE
BLOCK” IN CLASS 19 BY BAZUUKA LIMITED
AND
IN THE MATTER OF AN APPLICATION FOR CANCELLATION OF
REGISTRATION BY MIRONGO COMPANY LIMITED
AND
IN THE MATTER OF THE STATUTORY DECLARATIONS ACT, CAP 22
STATUTORY DECLARATION
I, HAJJI MUZIIRA of C/o FIRM C3 & Co Advocates, P.O BOX 1223, Makerere
Kagugube, Kampala do solemnly swear and make oath and state as follows;
1. That I am a Male adult Ugandan of sound mind, director of Mirongo
Company Limited in which capacity I make this statutory declaration.
2. That the company deals in the manufacture of the commonly used concrete
blocks.
3. That the company is the registered owner of the trademark No. 232323”
CONCRETE BLOCK” in class 19. (A Copy of certificate of registration is
hereto attached and marked as “A”)
 4. That the company has attained immeasurable success attached to the
trademark in that from 2005 to date, the company has no sold over 20
million blocks.
5. That the trademark through use since 2005 has acquired substantial
reputation and good will as it has attracted several players in the Concrete
Block industry.
6. That the mark registered by Bazuuka Limited is similar to the one registered
by the company and the public is being confused or deceived as to the
source of the company’s goods vis-à-vis those produced by Bazuuka
Limited.
7. That the mark registered by Bazuuka Limited still remains on the register
despite being identical and similar to our mark which is in contravention
with the Trademarks Act 2010.
8. That the continued existence of the mark registered by Bazuuka Limited has
occasioned substantial loss to the company as a result of confusion that is
inferred from the similarity of the marks.
9. That the conduct of Bazuuka Limited in continuing to operate with the
trademark is in bad faith.
10.That the company is desirous of applying to the registrar of trademarks to
expunge the trademark registered by Bazuuka Limited from the register on
grounds of similarity.
11.That I make this solemn declaration conscientiously believing it to be true
and correct to the best of my knowledge and belief in accordance with the
Statutory Declarations Act, Cap 22 of the Laws of Uganda.
SWORN at Kampala this 28th day of January, 2024
By the said HAJJI MUZIIRA
……………………………………..
 DECLARANT

WORKSHOP 1 - GROUP 4
TASK IV
BRIEF FACTS
Mondo cooking oil Ltd and has been in existence since 1994.The company
operates under trademark “Mondo oils” in class 29, It has been operating in
northern Uganda and has no intentions of expanding to other regions of the
country.However Mr. Wakabi has established a small scale factory in kaliro district
producing vegetable oil on small scale but he wants to sale his oil using Mondo
oils logo in eastern Uganda.
ISSUES
1. What steps can Mr. Wakabi take to legally use the trade mark of Mondo
cooking oil Limited?
2. What are the necessary documents needed in the circumstances?
3. How can Mr. Wakabi acquire ownership of the mark from Mondo legally?
4. What are the necessary documents needed in such a transaction?
LAW APPLICABLE
1. The Constitution of the Republic of Uganda 1995
2. The Trade Marks Act No.17/2020
3. Trade Marks Amendment Act No. 09/2021
4. Trade Marks Regulations 2012
5. Case law
RESOLUTIONS
1. What steps can Mr. Wakabi take to legally use the trade mark of
Mondo cooking oil Limited.
Mr. Wakabi can request Mondo cooking oil Limited for a permitted user.
Under Section 49(1) of Trade mark Act, the owner of the trade mark may permit
another person to be registered as permitted user in respect of the goods and
services it is registered. Permitted use under Section 49(3) of Trade Mark Act is
taken to be used by owner of the trademark.
Under Section 49(4) a permitted user, is entitled to call upon the owner of the
trademark to take proceedings to prevent infringement.
Where the owner refuses or neglects to take proceedings within two months after
being called upon, the permitted user may institute proceedings for infringement in
his own name; Section 49(5) of the Trade Mark Act.
Procedure of Registering a Permitted user.
a) Application.
The owner and proposed registered user apply to the registrar and furnish him/her
with a statutory declaration made by the owner or his/her agent and approved by
the registrar. This is provided for under Section 49 (7) of the Trade Mark Act.
According to Regulation 64 of the Trade Marks Act, the application is in Form
TM 48
b) Particulars.
The applicant must give particulars of the relationship that is proposed or existing
between the owner and proposed user. It must show the degree of control proposed
by the owner over the permitted use and any other restrictions. Section 49(7)(a) of
the Trade Mark Act.
The application according to Section 49(7)(b) of the Trade mark Act should
show any conditions proposed in respect of the characteristics of the goods or
services and duration of the permitted use.
c) Registration.
The registrar will consider the information provided to him or her and if satisfied
that the application for registration of permitted user has complied with its
requirements for registration and is not contrary to public policy, the registrar will
register the proposed registered user of particular goods and services. This is
provided for under Section 49(8) of the Trade Marks Act.
d) Entry.
The Registrar must enter the permitted user in a register stating the date on which
such entry is made as provided for under Regulation 65(1) of the Trade Marks
Regulations.
The entry will also include the business address and the address of the service of
permitted user, under Regulation 65(2).
e) Notification.
A notification in writing of the registration of permitted user must be sent to the
registered proprietor of the trademark, to the permitted user and every other
permitted user of the same trade mark and must be published in the gazette, as
provided for under Regulation 65(2) of the Trade mark Regulation.

The documents required to permit wakabi to legally use the trade mark

THE REPUBLIC OF UGANDA

IN THE MATTER OF THE TRADEMARKS ACT, 2010
IN THE MATTER OF THE TRADEMARKS (AMENDMENT)
REGULATIONS, 2021
IN THE MATTER OF TRADEMARK LICENSE BY THE LICENSOR TO
LICENSEE

TRADEMARK LICENSE AGREEMENT

THIS AGREEMENT is made and entered into on this………….......day of

……………………….2024
BETWEEN
MONDO COOKING OIL LTD of P.O. BOX 14669, Kampala (Hereinafter
referred to as “the Licensor” of the one part, which expression shall where the
context so admits bind and include their assignees, transferees and successors in
Title on the one hand.
AND
MR. WAKABI of P.O. Box 1901 Kampala, Tel: 0704 560638 (Hereinafter
referred to as “the Licensee”, which expression shall where the context admits
bind and include his successor transferees, and assignees in title of the other hand.
AND
WHEREAS the Licensor is the legal owner of the trade mark called Mondo Oils
and is desirous of licensing the same to the Licensee.

NOW THEREFORE THESE PRESENTS WITNESS AS FOLLOWS:

1) Grant of License
The Licensor grants the Licensee a non-exclusive, non-transferable license
to

use the trademark "Mondo Oils" ( ) solely for the

purpose of manufacturing, marketing, and selling cooking oil within the

territory of Kaliro District.
2) Term
The initial term of this license shall commence on………….. and continue
for a period of………... Either party may renew this Agreement for
additional terms upon mutual written agreement.

3) Usage Guidelines
The Licensee agrees to use the Trademark in strict accordance with the
usage guidelines provided by Licensor and shall not modify, alter, or
 combine the Trademark with any other marks without the prior written
consent of Licensor.

4) Quality Control
The Licensee agrees to maintain the quality and standards of the cooking oil
bearing the Trademark consistent with the standards set by Licensor. The
Licensor reserves the right to conduct periodic inspections of Licensee's
facilities and products to ensure compliance.

5) Compensation
In consideration for the license granted herein, The Licensee shall pay the
Licensor a royalty fee of…………………….of the Net Sales of the licensed
products. Payment shall be made on a quarterly basis, within 30 days after
the end of each quarter.

6) Termination
Either party may terminate this Agreement upon written notice if the other
party materially breaches any provision of this Agreement and fails to
remedy such breach within 15 days after receiving written notice of the
breach.
Upon termination, Licensee shall cease using the Trademark immediately.

7) Confidentiality
Both parties agree to keep confidential all proprietary information received
during the term of this Agreement and this includes, but is not limited to,
marketing strategies, manufacturing processes, and financial information.

8) Dispute Resolution
This Agreement shall be governed by and construed in accordance with the
laws of Uganda and any disputes arising out of or in connection with this
Agreement shall be resolved through arbitration in accordance with the rules
of ICAMEK.

9) Miscellaneous
 a) This Agreement constitutes the entire understanding between the
parties and supersedes any prior agreements or understandings,
whether written or oral.
b) Any amendments to this Agreement must be in writing and signed by
both parties.
c) This Agreement shall be binding upon and inure to the benefit of the
parties and their respective successors and assigns.

IN WITNESS WHEREOF the parties hereto have affixed their respective

signatures on the day, month and the year first aforementioned

LICENSOR:
………………………………………………………………
Mondo Cooking Oil Ltd

LICENSEE:
………………………………………………………..
Mr. Wakabi

WITNESSES:
………………………………………………………..
………………………………………………………..
Regulation 54

and 57

FORM TM 14
FEE

THE REPUBLIC OF UGANDA

THE TRADE MARKS ACT 2010.
Joint Request to the Registrar by Registered Proprietor and Transferee to
register the Transferee as subsequent Proprietor of Trade Marks upon the same
devolution to title.
(Regulations 54 and 57)
To: Registrar Of Trade Marks,
P.O. Box 6848,
Kampala.
We Mondo cooking oil Ltd found in northern Uganda operating under “Mondo
Oils” trade mark and Mr. Wakabi of Kaliro district., hereby request, under
regulation 64 that the name Wakabi carrying on bussines as a producer of
vegetable oil in Eastern Uganda in Kaliro district be entered in the Register of
Trade marks as the proprietor of The trade Mark No……………. in class 29 as
from the 29th day of January 2024 by virtue of the Assignment deed no. 1 of 2024.
The Trade Mark at the time of the assignment was used in a business in the goods
in question, and the assignment took on the appointed day otherwise than in
connection with the goodwill of a business in the goods.
Dated this ………………..day of …………………………………..20………
Signature of the Assignor
………………………
Mondo Cooking Oil Ltd
Signature of the Transferee
…………………………………
. Wakabi

THE REPUBLIC OF UGANDA

IN THE MATTER OF STATUTORY DECLARATION ACT,CAP22
IN THE MATTER OF TRADE MARK ACT,2010
AND
IN THE MATTER OF PERMITED USER
OF TRADE MARK BETWEEN MONDO COOKING OIL LTD AND WAKABI-
SMALL SCALE FACTORY
STATUTORY DECLARATION
I MONDO JAMES director of Mondo cooking oil limited situated in northern
Uganda, do state as follows;
1. I am a male adult Ugandan of sound mind and a director of Mondo oil limited,
hence the capacity I swear this Statutory declaration.
2. That Mondo cooking oil limited is a company incorporated in Uganda ( A copy
of certificate of incorporation attached)
3. That the company is the registered owner of trade mark” MONDO OILS in
class 29”( Acopy of certificate for trade mark registration is attached).
4. That the company operates in northern Uganda and has no intentions to expand
its business to other regions of the country
5. That the company decided to permit Mr.Wakabi of small scale factory situated
in kaliro to use it’s trade mark only in the region of eastern Uganda .
6. That the company has entered into an agreement permitting Mr.Wakabi of
small scale factory to use the trade mark in eastern Uganda( A copy of
permission agreement attached).
7. That the company through its shareholders passed the special resolution
permitting MR.Wakabi of small scale factory to use it’s trade mark in eastern
Uganda.
8. That whatever stated is true and correct to the best of my knowledge.

Dated at Kampala this 29th January, 2024

By said declarant;
…………………………………….
Mondo James(Director of Mondo oil limited)

SWORN before me.

……………………………….
Commissioner of oaths.

ii) BRIEF FACTS

Mondo cooking oil limited has decided to leave the market and is no longer
interested in the manufacture of oils. Advise Mr. wakabi how he can legally
acquire ownership of the mark from mondo.
ISSUE 3.
How can Mr. Wakabi acquire ownership of the mark from Mondo legally?
Mondo cooking oil Ltd can give an assignment of his trademark to Mr. wakabi.
An assignment is defined in Section 1(1) of the Trade Marks Act to mean an
assignment or transfer of rights and liabilities under this act.

According to Section 31(1) of the Trademarks Act, a registered trademark

relating to goods or services is assignable in connection to the good will relating to
it. A registered trademark is assignable and transmissible in respect of all goods or
services it is registered-Section 31(2) of the Trade Mark Act.

In R.J Reuter Co. Ltd Vs Feud Mulhens [1953] 2 ALL ER 1160, it was held
that in an assignment of a trade mark an assignee retains an exclusive right in
himself to use the same mark at common law.

Procedure
a) Application for assignment.

According to Section 33(1) of the Trade Mark Act, where a person becomes
entitled by assignment or transmission to a registered trademark, he or she shall
make an application to the registrar to register his or her title.

Under Regulation 54 of the of the Trade Mark Regulations, that a person may
conjointly with the registered proprietor apply to the registrar in Form TM 14 to
register his or her title.

Where there is no joint application, the person entitled to the assignment must
apply to the registrar in Form TM 15 to register his or her title.
b) Particulars.

Under Regulation 56(1) of the Trade Mark Act, an application for entry of
assignment will contain the name, trade or business address and description of the
person claiming to be entitled. The application should also contain the instrument
if any under which that person claims so as to enable the registrar inspect such
instrument.
c) Proof of Title.
Under Regulation 58, of the Trade mark Regulations, the registrar may call on
the applicant to prove title to his/her satisfaction.
d) Registration.

On receipt of the application and proof of title to the Registrars satisfaction, the
registrar will register the applicant as owner of the trademark in respect of the
goods or services, the assignment has effect- Section 33(1) of the Trade Mark
Act.
e) Appeal.

Under Section 33(2) of the Trade Mark Act, any person aggrieved by the
decision of the registrar may appeal to court.
f) Entry in register.

Upon assignment or transmission, the Registrar is required by Regulation 60 of

the of the Trade Marks Regulations to enter in the register, the name of the
person to be registered as proprietor, his/her business address, description and
particulars of the transmission or assignment.

4. What are the necessary documents needed in such transactions?

 THE REPUBLIC OF UGANDA
IN THE MATTER OF THE CONTRACTS ACT, 2010
IN THE MATTER OF THE TRADEMARKS ACT, 2010
IN THE MATTER OF SALE OF A TRADEMARK

TRADEMARK SALE AGREEMENT

THIS AGREEMENT is made and entered into on this………….......day of

……………………….2024
BETWEEN
MONDO COOKING OIL LTD of P.O. BOX 14669, Kampala (Hereinafter
referred to as “the Seller” of the one part, which expression shall where the
context so admits bind and include their assignees, transferees and successors in
Title on the one hand.
AND
MR. WAKABI of P.O. Box 1901 Kampala, Tel: 0704 560638 (Hereinafter
referred to as “the Buyer”, which expression shall where the context admits bind
and include his successor transferees, and assignees in title of the other hand.
AND
WHEREAS the Seller is the legal owner of the trade mark called Mondo Oils and
is desirous of selling the same to the Buyer.
NOW THEREFORE THE PARTIES WITNESS AS FOLLOWS:

1. SALE OF TRADEMARK

1.1 Grant of Rights

The Seller agrees to sell, transfer, and assign to the Buyer, and the Buyer agrees to
purchase from the Seller, all rights, title, and interest in and to the Trademark called
“Mondo Oils” with URSB Trade Mark Registration No. 34568.
1.2 Consideration
In consideration for the sale of the Trademark, the Buyer shall pay the Seller the
Purchase Price upon the execution of this Agreement an amount
of………………….UGX

2. REPRESENTATIONS AND WARRANTIES

2.1Seller's Ownership
The Seller represents and warrants that it is the legal owner of the
Trademark, having acquired it through legal means.
2.2Liens and Encumbrances
The Seller represents and warrants that the Trademark is free and clear of
any liens, claims, or encumbrances.
2.3Validity of Trademark
The Seller represents and warrants that, to the best of its knowledge, the
Trademark is valid, subsisting, and enforceable.
2.4Infringement
The Seller represents and warrants that, to the best of its knowledge, the use
of the Trademark does not infringe upon the rights of any third party.
2.5Title and Good Standing
The Seller represents and warrants that it has the legal right to sell the
Trademark, and the Trademark is in good standing with all relevant
authorities.
2.6Litigation
 The Seller represents and warrants that there is no pending or threatened
litigation relating to the Trademark.

3. TRANSFER OF OWNERSHIP

3.1Cooperation
The Seller agrees to take all necessary steps and execute any required
documents to effectuate the transfer of ownership of the Trademark to the
Buyer.
3.2URSB Filings
The Seller agrees to cooperate with the Buyer in filing any necessary
documents with URSB to effectuate the transfer of the Trademark.
3.3Notification of Transfer
The Seller agrees to promptly notify all relevant authorities, customers, and
business partners of the transfer of the Trademark to the Buyer.

4. INDEMNIFICATION

4.1Seller's Indemnity
The Seller agrees to indemnify and hold the Buyer harmless from any
claims, damages, costs, or liabilities arising out of the Seller's use of the
Trademark prior to the effective date of this Agreement.
4.2Indemnification Process
The Seller agrees to promptly notify the Buyer of any claims covered by the
indemnity, and the Buyer shall have the right to defend against such claims
at its own expense.

5. GOVERNING LAW

5.1Applicable Law
This Agreement shall be governed by and construed in accordance with the
laws of Uganda.
5.2Dispute Resolution
 Any disputes arising out of or in connection with this Agreement shall be
resolved through arbitration in accordance with the rules of ICAMEK.

6. CONFIDENTIALITY

6.1Non-Disclosure
Both parties agree to keep confidential all information related to the sale of
the Trademark, including the terms and conditions of this Agreement.

7. MISCELLANEOUS

7.1Entire Agreement
This Agreement constitutes the entire understanding between the parties and
supersedes all prior negotiations and agreements.
7.2Amendments
No amendment or modification of this Agreement shall be effective unless in
writing and signed by both parties.
7.3Notices
All notices required or permitted under this Agreement shall be in writing
and delivered to the respective addresses specified at the beginning of this
Agreement.

IN WITNESS WHEREOF, the parties hereto have executed this Trademark Sale
Agreement as of the date first above written.

BUYER:
………………………………………………………………
Mondo Cooking Oil Ltd

SELLER:
………………………………………………………..
Mr. Wakabi

WITNESSES:
………………………………………………………..
………………………………………………………..

Regulation 55 and 57

TM 15
FEE

THE REPUBLIC OF UGANDA

THE TRADE MARKS ACT, 2010.
Request to the Registrar to register a subsequent Proprietor of Trade Mark
or Trade Marks upon the same devolution to Title
(Regulations 55 and 57)

To: Registrar of Trade Marks,

P.O. Box 6848,
Kampala
I wakabi, of Kaliro district in Eastern Uganda producing vegetable cooking oil.
Hereby request that my name be entered in the Register of Trade marks as the
proprietor of Trade mark “Mondo Oils” No………… in class 29 as from the 29 th
day of January 2024.
I am entitled to the trade mark by virtue of an assignment deed no I of 2024
between Mondo Cooking Oil ltd and mr wakabi.
The Trade Mark at the time of the assignment was used in a business in the goods
in question, and the assignment took place on or the appointed day otherwise than
in connection with the goodwill of a business in the goods/and there is a copy of
the Registrar's direction to advertise the assignment, a copy of each of the
advertisement complying therewith and a statement of the dates of issue of any
publications containing them.
Dated this…………………….day of ……………………………20……
…………………………………….……………
(Signature)
…………………..
Mr. wakabi
Applicant