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Amendments to Trademark Laws

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Jan 20, 2016 (Newsletter Issue 1/16)
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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

Electronic Filing:
- 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