Grace Nakabugo

Legal Associate
Intellectual Property & Commercial Transactions
+256 414 259 992
+256 774 529 563

background

Grace is a Principal associate at the firm and works with the Intellectual Property team. Grace acts for and advises clients on the creation, registration, maintenance, protection, commercialisation and enforcement of intellectual property rights in Uganda. She is the Chairperson of the Uganda Law Society Intellectual Property Law Cluster.

Grace holds a Masters in Intellectual Property (MIP), a programme by the World Intellectual Property Organisation (WIPO), African Regional Intellectual Property Organisation (ARIPO) and Africa University, Zimbabwe. She also holds an LL.B (Hons) degree from Uganda Christian University and a Post Graduate Diploma in Legal Practice. In the past, she has been seconded to Anjarwalla & Khanna in Nairobi. Grace is interested in the field of commercial law with an emphasis on Intellectual Property and ICT Law.

 MEMBERSHIP IN PROFESSIONAL SOCIETIES

  • Advocate, High Court of Uganda
  • Member, Uganda Law Society
  • Member, East Africa Law SocietyMember, URSB IP Directorate Users’ Forum
  • Intellectual Property Expert, ARIPO Directory
  • Chairperson, Uganda Law Society Intellectual Property Law Cluste

PROFESSIONAL QUALIFICATIONS

  • 2011:     LL.B (Hons), Uganda Christian University, Uganda
  • 2013:     Dip. L.P (Bar Course), Law Development Centre, Uganda
  • 2018:     MIP (Cum Laude), WIPO, ARIPO, Africa University

 Career summary

  • 2019 to date     Principal Associate, MMAKS Advocates, Uganda
  • 2016 to 2019    Associate, MMAKS Advocates, Uganda
  • 2012 to 2015    Legal Assistant, MMAKS Advocates, Uganda
  • 2010 to 2011    Intern, International Law Institute, Uganda

 areas of expertise

  • Intellectual Property
  • Corporate commercial

 awards & accolades

  •  Best Female Young Lawyer: Uganda Law Society Annual Women in Law Awards 2018/19
  • Vice Chancellor’s Valedictorian Award: Best Overall Masters Graduand 
  •  WIPO Award: Best MIP Graduand 
  • ARIPO Award: Best MIP Graduand 
  • Mutare Garments Award: Best Overall Masters Graduand 
  • Consultus Publishing Service Award: Best MIP Female Graduand 
  • UCU Law Alumni Association Award: LL.B Best Performing Graduand 

 top matters

  •  Acting on behalf of twelve commercial banks in a copyright infringement suit. The firm’s role is to defend the Banks from allegations of infringement of copyright by rolling out agent assisted financial services and use of POS based technology platforms for agency banking. 
  • Acting for a multinational alcoholic beverages company in a trademark opposition matter. My role is to defend the registration of the company’s trademark being a brand variation of one of the company’s most renowned trademarks in Uganda and East Africa.
  •  Acting for a multinational alcoholic beverages company in a trademark opposition matter. My role is to oppose the registration of a trademark that is similar to one of the company’s globally renowned trademarks and likely to cause confusion and brand dilution.
  • Acting for a multinational alcoholic beverages company in a trademark cancellation matter. My role is to pursue the removal of a trademark from the register on the ground of none use and likelihood of confusion to the company’s trademark.
  •  Acting for a multinational consumer electronics and video game company in a trademark opposition matter. My role is to oppose the registration of a trademark that is similar to one of the company’s most famous trademarks and likely to cause confusion. 
  •  Acting for a multinational non-alcoholic beverages company in a trademark opposition matter. My role is to oppose the registration of a two trademarks that are similar to the company’s renowned trademark and likely to cause confusion.
  • Acting as counsel in a copyright infringement suit on behalf of Centenary Rural Development Bank. The firm’s role is to defend the Bank from allegations of infringement of copyright in the corporate logo and registered trademark currently used by the Bank.
  • Acted for a Cipla Quality Chemical Industries Ltd, a multinational pharmaceutical company in a trademark opposition matter, successfully defending the registration of the trademark EFAVIR.
  • Acted for Mandela Auto Spares Limited in a trademark opposition a matter, obtaining an order against the registration of a trademark similar to the Café Javas and Javas trademarks.
  •  Acted as counsel in a trademark infringement and passing off suit on behalf of Shape Impex International Fzc Ltd, a multinational grain milling company, obtaining orders against the infringement of the Kingdom Rice trademark and release into circulation of rice infringing the trademark.
  •  Acted as counsel in trademark oppositions and trademark infringement and passing off matters on behalf of Beiersdorf Ag, obtaining an order against the infringement of the Nivea brand.
  • Acted as counsel in a trademark opposition on behalf of NBA Properties Inc., obtaining an order against the registration of a trademark similar to the Chicago Bulls trademark.
  •  Acted as counsel in a trademark infringement and passing off suit on behalf of Wal-Mart Stores Inc., obtaining an order against the infringement of the Wal-Mart brand.
  • Acted as counsel in a matter of trademark cancellation and removal from the register, obtaining an order for the removal and cancellation of a registered trademark similar to the Delo and Havoline trademarks
  • Collaborated with the Uganda Registration Services Bureau on the drafting of the Industrial Property Act, Regulations and Fees, the Intellectual Property Policy and currently reviewing the Trademarks Act and Regulations for amendment.
  • Collaborated with the Uganda Registration Services Bureau in conducting national trainings and sensitisation on intellectual property rights.
  • Involved in the day to day application, registration and maintenance of intellectual property rights for international and local proprietors.