Mauritius: The Protection Of Industrial Property Rights In The Republic Of Mauritius

Last Updated: 18 December 2009
Article by Sharmilla Bhima

The provisions of the Patents, Industrial Designs and Trademarks Act 2002 (the "PIDTA") protect industrial property rights in Mauritius.

The legislation protects patents, inventions, industrial design, marks (i.e. trademarks, service marks and collective marks), trade names, layout-designs of integrated circuits, and geographical indications. As a general proposition the exclusive right to patents, inventions, industrial designs, marks and trade names is achieved by registration with the Controller of Industrial Property Office (the "Controller").

Copyright is not captured within the definition of industrial property, but it is recognised and protected under Mauritian law.

The Layout-Designs (Topographies) of Integrated Circuits Act 2002 defines the terms 'integrated circuit' and 'layout-design'. The Geographical Indications Act 2002 defines the term 'geographical indication'. However, neither piece of legislation is in force despite the President granting his assent to both Acts in August 2002.

Patents

The PIDTA defines a patent as 'the title granted to protect an invention', which is in turn defined as 'an idea of an inventor which provides the solution to a specific problem in the field of technology' (section 11(1)).

A registered patent is valid for a period of 20 years from the filing date of the application (section 22) subject to the payment of an annual fee to the Controller. Failure to pay the annual fee means that the patent application will be deemed to have been withdrawn and the patent shall accordingly lapse (sections 22(2) & (3)).

Under section 10 of the Patents, Industrial Designs and Trademarks Regulations 2004 (the "PIDTA Regulations"), an application to register a patent is lodged with the Controller as follows:

  • an application form in the English language and in the form set out at either of the Second, Ninth or Fourteenth Schedule of the PIDTA Regulations, as the case may be;
  • documents in support of the application together with translations in the English language where the documents in support are in a foreign language;
  • an original Power of Attorney duly registered with the Registrar General of Mauritius where the applicant appoints an approved agent to submit its application; and
  • the relevant fee set out in the First Schedule.

Upon receipt of an application, the Controller must earmark a filing date to the application (section 18(1)). Further, the Controller must examine whether (a) the application meets the aforementioned requirements and (b) any information concerning the right of priority, and foreign application and patents have been furnished (section 19(1)). The PIDTA does not require, the Controller to call for opposition. The Controller must grant a patent where he is satisfied that the requirements of the PIDTA have been fulfilled, and must communicate his decision within two years of examining a patent application (sections 20(1) & (6)). Where the Controller determines the application does not meet the requirements of the PIDTA he must reject the application and inform the applicant. The Controller does not have discretion to provide a conditional acceptance provided the applicant furnishes the missing elements to the application (section 20(2)).

Industrial Design

The Act defines an 'industrial design' as 'any composition of lines or colours or any three-dimensional form, or any material, whether or not associated with lines or colours ... provided that such composition, form or material – (a) gives a special appearance to a product of industry or handicraft, (b) can serve as a pattern for a product of industry or handicraft; and (c) appeals to and judged by the eye' (section 27(1)). Furthermore, the industrial design must not be contrary to public order or morality (section 18(4)). And, it must be 'new' as defined by the PIDTA namely (a) it must not 'have been disclosed to the public, anywhere in the world, by publication in tangible form or by use or by any other way, prior to the filing date or, where applicable, the priority date of the application for registration' (section 28(2)).

An application to register an industrial design is made to the Controller as follows:

  • the form prescribed by the Ninth Schedule of the PIDTA Regulations is completed and signed by the applicant or all the applicants where it is a joint application; 
  • the application must be supported by four copies of the necessary drawings, photographs or other adequate graphic representations of the industrial design;
  • the application must contain an indication of the article or articles that constitute the industrial design or in relation to which the industrial design is to be used;
  • the application must be accompanied by a specimen of the article embodying the industrial design where the industrial design is two-dimensional and in the size specified; and
  • the fee specified in the First Schedule must be paid.

(sections 34 & 35 PIDTA Regulations)

The PIDTA authorises an applicant to insert a declaration claiming priority contemplated under the Paris Convention (section 30(3)). Further, an applicant may withdraw his application at any time before registration provided the prescribed fee is paid (section 30(8)). Upon receipt of an application, the Controller must be satisfied that the application contains (i) the required indications concerning the identity of the applicant and (ii) the required graphic representations of the industrial design in order that he may grant a filing date in respect of the application (section 31(1)). The PIDTA has conferred discretion on the Controller to notify an applicant whose application is not complete to furnish the missing information (section 31(2)).

Once a filing date has been ascribed to an application, the Controller has a duty to examine whether (i) the application meets the requirements of the PIDTA, (ii) the application fee has been paid and, (iii) the industrial design falls within the definition of an industrial design under the PIDTA and is 'new' as defined by the PIDTA. The PIDTA does not contemplate the possibility of opposition in relation to an application to register an industrial design. Where the Controller is satisfied that an application meets the requirements of the PIDTA, he must publish a reference to the registration and issue a certificate of registration to the applicant once the applicant pays the prescribed registration fee. In the event that the Controller determines that the application does not meet the requirements of the PIDTA he must reject the application (section 31(4)).

A registered industrial design is valid for an initial period of five years from the filing date. Thereafter, it may be renewed for a maximum of three consecutive periods of five years. Continued registration is conditional upon (i) the application for renewal being made six months before the expiry of the validity period, (ii) payment of the renewal fees and, (c) compliance with any other conditions that may be prescribed under the PIDTA.

Marks, Collective Marks and Trade Names

The PIDTA exhaustively defines 'marks, collective marks and trade names'; the common denominator is that they must be capable of distinguishing the goods and/or services of one enterprise from another (section 35). The PIDTA also sets out factors that will disqualify an application to register a mark, collective mark and trade name (sections 36(2), (3), (4)).

A registered mark, collective mark or trade name is valid for a period of 10 years from the filing date of the application (section 41(1)). A registered owner may apply for the renewal of the registration for consecutive periods of 10 years provided the renewal fee is paid and any conditions as may be prescribed by the PIDTA are fulfilled (section 41(2)).

An application to register a mark, collective mark or trade name is submitted to the Controller together with (i) the fee prescribed, (ii) a reproduction of the mark, collective mark or trade name, as the case may be, and (iii) the list of classes of goods and services in respect of which the application is made in conformity with the international classification of the same as contemplated under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957 ("Nice Classification"). The PIDTA authorises an applicant to claim priority in the manner contemplated under the Paris Convention. Also, the PIDTA authorises an applicant to withdraw his application at any time before registration, subject to the payment of the prescribed fee (sections 37(7)(8)).

Upon receipt of an application to register a mark, an industrial design or a trade name, the Controller has a positive duty to examine whether the application complies with the requirements of the PIDTA (section 38). If satisfied that the application meets the requirements of the PIDTA, the Controller 'shall forthwith accept the application and cause it to be published in the prescribed manner' (section 38(2)). The PIDTA Regulations set out in detail the contents of the publication (section 51 PIDTA Regulations). Interestingly, the PIDTA does not cast any duty on the Controller to seek opposition to the application.

However, the PIDTA authorises 'any person' to oppose an application to register a mark, an industrial design or a trade name 'within the prescribed period' by way of notice, stating the grounds of opposition (sections 38(3)(4)). The scope of the phrase 'any person' has not been laid down by the PIDTA. The PIDTA Regulations declare that the prescribed period is a period of three months (section 52(1) PIDTA Regulations). In the event that there has been an opposition to an application to register a mark, an industrial design or a trade name, an applicant is entitled to submit a counter statement (section 38(5) PIDTA). The deadline for submitting the counter statement is a period of three months from the date the opposition has been lodged (section 52(3(b) PIDTA Regulations). In the event that there has been an opposition and the applicant has not submitted any counter statement, the applicant 'shall be deemed to have abandoned the application' (section 38(6)).

The legal framework for the protection of intellectual property in the Republic of Mauritius is presently under review in an endeavour to maintain a legal environment within the Mauritian territory that keeps abreast with developing trends globally. That review is expected to enhance the Mauritian territory's sound legal framework for the protection of intellectual property rights, especially for well-known brands.

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.

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Authors
Sharmilla Bhima
 
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