A trade mark is defined as a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.
A trade mark is territorial in nature. Trade mark registrations are only enforceable in the country in which the trade mark is registered. Consideration should therefore be given to the area in which a trade mark will be used and where protection is required. One should register a trade mark in countries where the product or services are being offered or intend to be offered. Trade mark protection in neighbouring states or other countries may be advisable. SADC (Southern African Development Community), currently comprising of Angola, Botswana, Democratic Republic of Congo, Lesotho, Malawi, Mauritius, Mozambique, Namibia, Seychelles, South Africa, Swaziland, Tanzania, Zambia and Zimbabwe (Seychelles is still in the process of ratifying the SADC Treaty) will increase cross border trading between these countries substantially. Therefore, trade mark protection in neighbouring African countries may be advisable and trade mark registration should be considered in each African country taking cross border trading into account.
Each country is governed by its own laws regarding Intellectual Property, including trade mark registrations. In order for best practice, there has to be an in-depth knowledge of the country's specific laws and regulations as well as the administrative requirements from the country's trade marks office to ensure proper registration and maintenance of a trade mark registration.
If maintained properly, trade mark rights will last indefinitely. However, the rights are dependent upon the following factors namely; continued use of the trade mark and renewal of the trade mark within the relevant time period. Each country has its own time period in which a trade mark renewal application must be filed by submitting the required form and paying the required renewal fee. The registration will remain in force for a period of seven to fourteen years; the extent of the renewal period varies from country to country. The period is calculated either from the application or the registration date, depending on the national laws and regulations. In most countries a renewal application may be filed six months before the renewal due date without shortening the original renewal period. Very few countries accept online applications and most trade mark renewal applications are filed in hard copy.
Not all African countries allow the late filing of a renewal application, i.e. within a grace period, but it is possible to file a restoration application in some of the African countries, if the proprietor of a registered trade mark was not able to meet the renewal deadline through no fault of his own and despite all diligence to do so. The restoration of a trade mark remains the discretion of the Registrar/Commissioner of Trade Marks and will only be considered after the required documentation has been filed and the applicable fees paid. Whether a late renewal application or a restoration application is filed, it is substantially more expensive then filing the renewal application before the renewal due date.
In most African countries a trade mark registration will become vulnerable to expungement and removal from the trade mark register if, inter alia, it is not used within a period of approximately three to five years, depending on the national laws. The provision for removal of a trade mark registration on the basis of non-use will not apply if the non-use was due to special circumstances in the trade and there was no intention on the part of the proprietor to abandon the mark. It is therefore not only important that a record of use of the trade mark is kept in order for the rights to be properly protected but certain countries, for example Mozambique, require a declaration of intention to use to be published every five years from the application date.
For all countries where they do not have a formal trade mark registration process, for example Maldives, cautionary notices should be published. A cautionary notice is an advertisement published at regular intervals in a leading newspaper in that specific country. It is recommended that the cautionary notice be published every two to three years. The cautionary notice will inform third parties that, although the country does not have a formal trade mark registration process, the mark being advertised is considered the trade mark of the person advertising it.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
