12-06-2016 (Newsletter Issue 22/16)IP Act of Liberia ChangedThe new Liberian Industrial Property Act, 2014 (“the New Act”) was approved by the Liberian House of Representatives on June 14, 2016 and is now in force. The new Act repeals both the Copyright Act of Liberia 1997 and the Industrial Property Act of Liberia, 2003 (“the 2003 Act”) and provides for the protection of Copyright, Trade Marks, Geographical Indications, Industrial Designs, Patent and Utility Models and lay-out designs of Integrated circuits.
The Regulations are still being drafted and there is, accordingly, still some uncertainty regarding a number of aspects. Some of the amendments of the New Act are:
- Provision for the filing of international applications under the Madrid Protocol are made.
- Provision is also made for honest concurrent user applications.
- The registration of non-traditional trademarks, including colour and shape marks and Certification marks has been defined.
- Collective marks are redefined.
- A wide range of circumstances in which a trademark cannot be registered is provided.
- The New Act entitles the registered proprietor to prevent an unauthorised third party from using the mark under certain conditions.
- Use of an identical or similar mark to the registered trademark, in the course of trade for non-commercial purposes may constitute trademark infringement.
- Protects the advertising value of a trademark.
- Stipulation of a number of acts which shall be regarded as use of the mark in the course of trade, including the use of a mark in oral communications, irrespective of the means of communication or media used.
- Sets out various acts which shall not constitute trademark infringement, such as the parallel importation of genuine goods, provided that the goods and its packaging or wrapping have not suffered any alteration or damage.
- Any interested person may request the Director General to invalidate the registration of a trademark in relation to some or all of the goods or services for which the trademark has been registered.
- A registered trademark may be vulnerable to cancellation.
- A well-known distinctive mark shall be infringed by the unauthorised use of a mark identical or confusingly similar to that distinctive mark, where such use would indicate a connection between the goods and services of the owner of the well-known mark or the reputation of the mark or its owner is likely to be damaged by such use.
- The Act lists factors which shall be taken into consideration to determine whether a mark is well-known.
- It is stated that a mark will be considered to be well-known if it is generally known in one relevant sector of the public.
- Licensing of a registered trademark is recognized and licence agreements must provide for the effective control by the licensor, of the quality of the goods or services of the licencee in connection with which the mark is used. If the agreement does not provide for such quality control, or such control is not effectively carried out, the agreement will be invalid.
- Assignments shall be in writing and duly executed.
For further information, please see here
Source: Adams and Adams, South Africa
09-13-2016 (Newsletter Issue 16/16)
New Design Act for Zambia
Zambia has passed into law the new Industrial Design Act no 22 of 2016 repealing the Registered Designs Act of 1958. The new Design Act came into force on June 6, 2016.
Some of the new provisions contained in the new Act are as follows:
- Worldwide novelty requirements;
- Grace period and exceptions in respect of disclosure of the design in order to comply with novelty requirements;
- Restoration of rights lost due to non-payment of maintenance fees;
- Amendment of a design application and
- Opposition of design registration by 3rd party including the state.
The new Act also introduced changes in respect of the term of a registered design. The 1958 Act provided for a registration term of five years extendable upon payment of renewal fees for two further five year terms.
According to the new Act, the term of registration is five years from the filing date renewable upon payment of renewal fees for a further period of five years. Furthermore, while the 1958 Act made provision for foreign filing licence in respect of new foreign design applications by a person ordinarily resident or domiciled in Zambia, the 2016 Act is silent in this regard.
Implementing Regulations Revised
ARIPO recently revised the Implementing Regulations concerning trademarks, patents, and industrial designs, with the amendments entering into force on January 1, 2016.
The definition of a trademark was broadened to include non-conventional trademarks. However, many issues relating to the examination and enforceability of non-conventional marks remain unclear. E-filing of trademark applications is expected to be implemented in the future, with paper filing remaining an option. Another important development is the introduction of a time limit for responding to office actions. The new time limit is set for two months allowing for the standardization of the registration process.
03-16-2016 (Newsletter Issue 5/16)
Trademark Opposition Hearings No Longer Available in Botswana
On January 26, 2016, the Companies and Intellectual Property Authority (CIPA) announced that it no longer has the capability to conduct hearings for trademark oppositions and invalidations. The reason given was that due to recent restructuring, CIPA had lost staff members essential to the operation of these hearings.
No time period has been given as to when CIPA will regain the capability to conduct such hearings. However, assurances have been made that an interim solution is currently being investigated. For the time being, CIPA will receive and acknowledge the trademark oppositions and invalidations lodged with their office.
As a long-term solution, CIPA intends to review the Industrial Property Act of 2010 with a view to incorporating provisions for a Trademarks Tribunal, not unlike that of its neighbor, South Africa. Substantial delays can be expected.
Source: INTA Bulletin, March 1, 2016, Vol. 71, No. 4
Spoor & Fisher, South Africa as contributor and Remgro Management Services Ltd, South Africa as verifier
03-16-2016 (Newsletter Issue 5/16)
Accession to the Banjul Protocol by Sao Tome and Principe
Sao Tome and Principe became the 19th member of the ARIPO on May 19, 2014. However, the implementation of the ARIPO international filing system requires an accession to the Harare and Banjul Protocol, and this was executed by Sao Tome and Principe in two stages:
1) Accession to the Harare Protocol on Patents and Designs
Sao Tome and Principe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of ARIPO on May 19, 2014. This brings the number of active ARIPO Member States which are parties to the Harare Protocol (on Patents and Designs) to 18.
Following the accession to the protocol, it has become possible for residents of the Sao Tome and Principe to file Patent and Industrial Design applications with ARIPO as a receiving Office.
2) Accession to the Banjul Protocol on Marks
On November 27, 2015, Sao Tome and Principe deposited an Instrument of Accession to the Banjul Protocol on Marks.
The Banjul Protocol entered into force, with respect to Sao Tome and Principe on February 27, 2016, and with effect from February 27, 2016, Sao Tome and Principe becomes eligible for designation as a Member States under the Banjul Protocol.
The accession of the Banjul Protocol by Sao Tome and Principe brings the number of Member States party to the Protocol to ten (10). Residents of Sao Tome and Principe will be able to file trademark applications with ARIPO as a receiving Office.
01-20-2016 (Newsletter Issue 1/16)
Official Fees Increased/Other Developments
An ARIPO Administrative Council Session took place in Zambia in November 2015. There have been significant developments regarding trademarks, designs and patents including fee increases as from January 1, 2016.
ARIPO trade marks are governed by the Banjul Protocol on Marks and the implementing Regulations. The Regulations were updated on November 17, 2015, and the following changes and clarifications were made:
Mark: The definition of a ‘mark’ has been broadened to include ‘a sign, name, word, device, brand, heading, level signature, letter, numeral or a combination thereof’ - Rule 1.
Specifications: Specifications must be confined to 50 words. Additional words will incur a surcharge of USD 5 per word - Rule 3.3
- In the future electronic filing of marks will be possible, although paper filing will remain an option - Rule 5 bis (1).
- The Regulations will apply to electronic filings as they do to paper-based applications, but ‘Administrative Instructions’ will be created to deal with specific issues regarding electronic applications, such as acknowledgments of receipt, the allocation of filing dates, and the signature of documents - Rule 5 bis (2) and (3).
- No member state is obliged to receive or process ARIPO applications filed electronically unless it has notified the ARIPO Office that it is prepared to do so in compliance with the provisions of the Administrative Instructions. Once it has done so, however, it cannot refuse to process an application filed electronically - Rule 5 bis (4) and (5).
Time Limits: An applicant will have a period of two months to respond to a notice informing it that its ARIPO application has been refused in a particular state. The state in question will then have a period of two months to respond to the applicant’s representations. If the state fails to respond in time, ARIPO will proceed with registration of the mark in that country - Rule 11.3.
Fees:The official fees have been changed as of January 1, 2016. We will inform you as soon as more details are available.
Source: Spoor & Fisher, South Africa
03-31-2015 (Newsletter Issue 5/15)E-Services Now AvailableARIPO has implemented the web based Intellectual Property Administration System (POLite+, the ICT Infrastructure Modernization Project for ARIPO and its Member States, sponsored by KOICA, a development Organization of the Republic of Korea).
When fully functional, the system will enable users to file patent, trademark, utility model and design applications and also conduct searches on-line.
The overall system will consist of:
Online Services (eservice.aripo.org)
This is a public service module where members of the public can access online services like Quick Search, Advanced Search, IP Forms, Journals etc without having to register with ARIPO.
Though on the same page as public areas, this is a members-only area where members will require registration and acceptance by ARIPO. This facility allows for online filing of IP files, online payment of fees, sending and receiving notifications and general tracking of filed applications.
The system has been available since March 9, 2015. However, available menus at the moment are the following:
- Sign Up
- IP Digital Library
- Fee Schedule
- User Guide
To enter the system, please click here
10-01-2011 (Newsletter Issue 11/11)
Rwanda Joins ARIPO
Rwanda has become the latest African country to join the African Regional Intellectual Property Organisation (ARIPO). The country deposited its Instrument of Accession on 24 June 2011 and the Harare Protocol entered into force on 24 September 2011.
ARIPO is a regional organisation which provides a central system for registration of patents, trademarks and designs in all member countries. ARIPO now has 17 active member countries. These include Botswana, Gambia, Ghana, Kenya, Liberia, Lesotho, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
Source: Adams and Adams, South Africa
10-01-2010 (Newsletter Issue 15/10)
Ugandan Trademark Act Approved
Ugandan President has approved the Trademark Bill of the Ugandan Parliament thus passing into law the Ugandan Trademark Act 2010.
The Act includes protection for service marks and was published in the Official Gazette in September 2010 as a supplement. It is unclear when the act becomes in force.
The history of the African Regional Intellectual Property Organization (ARIPO) goes back to some English speaking African countries wanting to pool their resources in intellectual property matters by establishing a regional organization.
The Lusaka Agreement of December 1976 merely created ARIPO. Additional legal instruments had to give the organization specific functions to perform on behalf of member states.
Member states of ARIPO are: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Príncipe, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
Additional legal instruments are:
(a) The Protocol on Patent and Industrial Designs within the Framework of the African Regional Industrial Property Organization (the Harare Protocol);
(b) The Banjul Protocol on Marks of 1993.
Simultaneous trademark protection by a common registration in all ARIPO member states will be possible only when all states have signed the Banjul Protocol (at the moment only Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Tanzania, Uganda and Zimbabwe). However, only Botswana, Liberia and Zimbabwe have incorporated the provisions of the Banjul Protocol in their national laws. Accordingly, there are doubts regarding the validity of ARIPO registrations in Lesotho, Malawi, Namibia, Swaziland, Tanzania and Uganda. There are also national trademark laws in force in the ARIPO member states.
Trademark protection is obtained by registration.
Exception: In Malawi and Uganda service marks are not approved.
The following expressions, denominations or signs may constitute a trademark: a sign, words (including company names, surnames, forenames, geographic names or any other words or set of words), device, brand, heading, level signature, letters and numerals or combinations thereof, devices including fancy devices, drawings and symbols, coloured marks for words, devices or any combination thereof, sounds (transcribed in musical notes or other symbols), olfactory marks, invisible signs that can be recognized by touch (i.e. a sun ray or moon), three-dimensional signs as the shape of goods or their packaging.
The following types of marks are registrable: trade marks, service marks, collective marks and certification marks.
The application must be filed either directly at the ARIPO Office in Harare, Zimbabwe or via the Industrial Property Office of a contracting state. The filing date shall be the date of receipt of the application in the respective office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
The application is only examined formally; no search for collisions with prior trademarks is conducted.
The ARIPO office notifies each designated state and further requests each of them to examine the application in accordance with its national laws and notify the ARIPO office of its findings within a prescribed period. On expiration of the prescribed period the ARIPO office publishes the mark for registration in all those countries where it is considered registrable. Three months after publication, the mark will be registered if there has not been any opposition during this time.
The processing time from first filing to registration is approx. 1 year.
The opposition period is 3 months from publication of the trademark application. Opposition has to be filed at the respective national offices, not at the ARIPO office.
A trademark registration is valid for 10 years from date of application. It is renewable for periods of 10 years.
After the expiry of the mark, a grace period of 6 months is allowed for the payment of the fee and a surcharge.
National laws do apply. In most member states, there is a use requirement. If, in these countries, the trademark has not been used within 5 years from registration, or has later not been used for a continuous period of 5 years, it may be subject to cancellation.
Official fees are approved in USD. The basic application fee is USD 100. A class fee of USD 50 for the first class, and USD 10 for each additional class have to be paid per designated state. As of January 1, 2016, an official specification surcharge for each word after the 50th word, per class, of USD 5 will be due.
The Prices above are SMD Group Search Fees
Country Surveys of Member States
Country Index is a free service of SMD Group. We thank the following law firms for their assistance
in updating the information provided.
, Kenya (KE)
, Lesotho (LS)
, Mozambique (MZ)
, Namibia (NA)
, Rwanda (RW)
, Sao Tome and Principe (ST)
, Sudan (SD)
, Swaziland (SZ)
, Tanzania (TZ)
, Uganda (UG)
, Zimbabwe (ZW)
, Pretoria, South Africa
Brian Bacon Inc., Cape Town, South Africa
Spamer Triebel Inc., Cape Town, South Africa
Spamer Triebel Inc., Cape Town, South Africa