Mozambique's Intellectual Property Code dated December 31, 2015, established that the filing of a Declaration of Intention of Use (DIU) is mandatory regarding trademark registrations in Mozambique. It is important to underline that this obligation is only applicable to trademarks, but not to other distinctive trade signs.
In other Portuguese speaking jurisdictions, such as Portugal or Angola, the DIU system has been replaced, over time, by the obligation of the use of the trademark by its owner, for the products/services it covers. The DIU's main purpose is to ensure the maintenance of an exclusive right, regardless if it is used or not.
Such system allows the holding of an exclusive right over a trademark, preventing others from using and registering similar trademarks, even if the trademark is not being used. The obligation of using the trademark opposes this system, as it prevents someone to ad aeternum hold the right over a trademark, without using it, as it allows other interested parts to cancel the registration of the owner, if said trademark is not used effectively.
The DIU system allows someone to hold exclusivity over a trademark, regardless of its use, preventing third parties to oppose to the maintenance of this right.
Even though its mandatory to file the DIU, there is no automatic, direct consequence to the trademark registration should this document not be filed. Nonetheless, a trademark for which the DIU has not been filled may lapse, if a lapse application is filed before the IPO – Intellectual Property Office of Mozambique, by a third interested party.
The existence of previous similar trademarks is an obstacle to the granting of a similar trademark application, in two different stages of the registration procedure.
To begin with, the owner of the first registered trademark may oppose to the application of a similar trademark, if said owner considers that there is a similarity and, therefore, a likelihood of confusion with the previously registered trademark.
Additionally, even if there are no oppositions, the IPO may still issue a provisional refusal of the trademark application after conducting a prior trademark search.
In both cases, should the DIU of the prior trademark, which constitutes an obstacle to the granting of the application, not have been filed, proceeding with a lapse application is the most effective way to guarantee the granting of the trademark application.
The filing of the DIU is, therefore, extremely important as it constitutes an essential condition to the maintenance of the trademark right, as a simple lapse application requirement can lead the trademark to expire.
Trademark owners, or their representants, must submit the DIU's before IPO, to demonstrate the use, or intention of use, of the registered trademark within Mozambique.
In general, DIU's must be submitted each five years, except during renewal years, and the applications may be presented within one-year time frame.
Regarding the deadlines to submit this application, they differ according to whether the trademark has a national registry for Mozambique or an international registry, through the World Intellectual Property Organization - WIPO, and, within the latter, whether the Trademarks in question has been subjected to a renewal or not.
Therefore, we must consider three distinctive possibilities:
- Nacional Trademark: the DIU application due date is calculated from the application filing date, the document may then be submitted within a one year time frame, starting 6 months before and ending 6 months after the 5th anniversary of the application filing date.
- International Trademarks before renewal: regardless of whether the designation is original or subsequent, the date to be considered shall be the day on which the international trademark application was communicated to the Office. In the WIPO database this date appears as "Date of recording / Date of Notification". The DIU can be submitted 5 years after this date, between 6 months before and after.
- International Trademarks after renewal: if the international trademark has been renewed, the relevant date for the calculation of DIUs is the renewal date. This means that the document must be submitted 5 years after the renewal within 1 year, starting 6 months before and ending 6 months after the mentioned date.
The legislation currently in force states that it is not necessary to provide evidence of use of the Trademark in Mozambique when the DIU is submitted within the due time frame. However, a DIU delivered after the deadline has ended must be accompanied by evidence of use in Mozambique.
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.