Intellectual Property Law updates - October 2017 October 2017

By Spoor & Fisher, Published in Intellectual Property

Mozambique: importance of filing a Declaration of Intent to Use

A peculiarity of the trade mark system in Mozambique is that the owner of a registration needs to file a Declaration of Intent to Use (DIU) every five years – there is a six-month grace period. No actual use needs to be established, the trade mark owner simply needs to declare an intention. If the owner fails to file a DIU the registration remains valid but it is unenforceable and it remains so until a DIU (this time with proof of actual use) is filed. Owners must note that a registration for which no DIU has been filed will be cancelled if a third party applies for cancellation. Oddly in Mozambique there is no provision for cancellation for non-use, simply for failure to submit a DIU.

There is a growing trend of companies in Mozambique applying for the cancellation of trade mark registrations for which no DIU has been filed, seemingly as part of a scheme to acquire the trade marks of foreign companies. The owners of these trade marks often do not even know this is happening as the Intellectual Property Institute of Mozambique (IPI) does not send notice of applications for cancellation to the trade mark owners.

The legislation states that, in the case of a national registration, the five-year period date is calculated from the filing date whereas, in the case of an International Registration, it is calculated from the international registration date.

Our advice is simple: take DIUs very seriously. We know companies that have not used their trade marks are sometimes wary of filing DIUs. As explained, the obligation is simply to file a statement of intent, not establish actual use. A failure to do so can, however, lead to the loss of the trade mark registration.

Trade mark law in Sierra Leone: A highly unsatisfactory state of affairs

In this note we examine some serious issues with trade mark law in Sierra Leone.

The Trade Marks Act 2014

Trade marks are governed by the Trade Marks Act of 2014. The Act replaced the Trade Marks Cap 244 (the old Act). It has many of the features one expects in modern trade mark legislation, for example:

  • A trade mark is described as something that must be capable of distinguishing, and it includes words, personal names, letters, numerals and figurative elements;
  • Anyone claiming to be the proprietor of the trade mark can file an application;
  • Priority can be claimed;
  • There is reference to the Nice classification and the fact that an application is to be accompanied by a "list of goods and services";
  • There is full examination, publication and opposition;
  • An application can be refused on the basis of a similar mark for similar goods;
  • An application can be refused if it clashes with a well-known mark or a trade name;
  • The registration term is 10-years
  • The infringement right extends to similar goods;
  • Damages can be awarded for infringement;
  • Deliberate infringement is a criminal offence;
  • A registration can be cancelled for five years' non-use.

A few other aspects are worth noting:

  • Foreign applicants must be represented;
  • There is provision for the registration of collective marks;
  • The legislation deals with trade names, unfair competition and false trade descriptions, and it creates many offences;
  • The legislations gives specific recognition to international trade mark agreements signed by Sierra Leone – the country has been a member of the Madrid Protocol since 1999;
  • The legislation makes provision for an IP Tribunal, which is given considerable powers.

There are no rules

Inexplicably, no Rules have been passed under the Act. The authorities seem quite relaxed about this, pointing out that s60 provides that the Rules passed under the old Act will continue to apply until they are revoked or amended.

But this is very problematic. Not only are the old Rules scant but they refer to and incorporate the old British classification system (50 classes of goods, no services). So how can these regulations apply to legislation that makes specific reference to services and the Nice classification? The Registrar is still applying the old British classification, which means that no service mark protection is available.

Who is making the decisions?

Under the Act the IP Tribunal has considerable powers, it is authorised to hear appeals, invalidations, infringements and criminal offences, whereas the Registrar is authorised to hear oppositions and non-use actions. Under the old Act the Registrar also had limited powers; the Supreme Court was charged with issues of distinctiveness, as well as oppositions, rival claims to the same mark, honest concurrent use claims and rectifications.

The IP Tribunal has, however, not yet been established. Section 60 provides that the Supreme Court will exercise the functions of the IP Tribunal until the new body is established. While this is fine, there are suggestions that the Registrar might be of the view that she is able to exercise the functions of the IP Tribunal in the interim. This is something that will need to be watched carefully.

Comment

What we have in Sierra Leone is an extraordinary situation – the act is being applied in terms of issues such as what constitutes a trade mark, registration procedures and registration terms. Yet two of the most important changes contained in the Act cannot be implemented – use of the Nice classification system and the registration of service marks. This obviously has serious implications for companies that do business in Sierra Leone, particularly those involved in the services sector. We hope the authorities in Sierra Leone deal with these issues very shortly.

OAPI: Former Director General sets out status quo and future plans

On 20 July, at a ceremony marking the departure of the Director General of OAPI, Paulin Edou Edou, a number of important announcements were made:

Criticism: OAPI will not take kindly to criticism from lawyers who represent clients before OAPI – this seems to be a consequence of the furore that arose after OAPI "acceded" to the Madrid Protocol a few years back, when a number of OAPI practitioners claimed the accession had not been done correctly, and that there were consequently real doubts about the validity and enforceability of international registrations designating OAPI. This issue of whether or not the accession was legal has yet to be resolved by a court.

Denis Loukou Bohoussou took over as Director General of OAPI on 1 August. On 21 April World Trademark Review reported on the impending change by saying that "new leadership could mean a change in direction at OAPI.' It went on to talk of a "period of transition", and said that "one thing that remains fairly constant is uncertainty around OAPI's implementation of the Madrid Protocol." It may well be that OAPI's position on the Madrid Protocol and the resulting criticism changes.

Annual Reports: The OAPI Annual Reports will resume. Copies of the 2014 and 2015 reports were handed out.

Computerisation: The computerisation of OAPI records that is taking place at present is leading to considerable delays, including delays with urgent searches.

Arbitration and Mediation Centre: The OAPI Arbitration and Mediation Centre is due to come into operation on 1 January 2018, and OAPI practitioners are urged to register as arbitrators and mediators. The Arbitration and Mediation Centre will be housed in the second floor of the old OAPI building that has recently been refurbished – the old building is adjacent to the current OAPI office in Yaounde, Cameroon.

E-Mail: Correspondence between OAPI and OAPI practitioners will increasingly be conducted by email.

Divisional patents: Requests for divisional patent applications must be made within the 30-month term provided for under the PCT. Unfortunately, this stance by OAPI effectively precludes PCT applicants from filing voluntary divisional patent applications under this deadline (i.e. prior to the regional phase entry deadline of 30 months), as there is no provision in the PCT which would allow for the filing of divisional applications during the International Phase. The fate of existing divisional applications filed outside of this deadline is unclear.

Comoros: OAPI patents granted before Comoros became an OAPI member definitely do not cover Comoros. It is unclear why this issue was raised as it has been clear for some time

Auditorium: The OAPI auditorium will be named after the Director General, so the Paulin Edou Edou Auditorium.

For further information please contact info@spoor.com

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