The Namibian Industrial Property Act, 2012 will finally come into effect on 1 August 2018 and will have far-reaching implications for the protection, use and enforcement of trade mark and other intellectual property rights in Namibia.
This Act provides for the registration and protection and administration of patents, utility model certificates, industrial designs, trade marks, collective marks, certification marks and trade names. It repeals the Patents, Designs, Trade Marks and Copyright Act, 1916, the Patents and Designs Proclamation, 1923 and the Trade Marks in South West Africa Act, 1973, making it one of the most anticipated pieces of intellectual property legislation in Namibia, aimed at ensuring compatibility of national laws with the international legal framework.
The Act provides for the protection of well-known trade marks in Namibia under article 6bis of the Paris Convention. This is an effective manner of providing protection for international brands which are yet to enter the Namibian market.
There has been considerable uncertainty in Namibia regarding the validity and enforceability of registrations filed under international and regional systems, such as the Madrid Protocol and the Banjul Protocol to which Namibia is a signatory. The new Act recognises Namibia's obligations in terms of these systems and provides legislative clarity as to the manner in which they are to be administered within Namibia's borders.
A further noteworthy development is the attachment of trade marks for the purposes of providing security to creditors and to confirm jurisdiction. This is a useful tool when instituting legal proceedings in Namibia against foreigners.
Infringement proceedings under the new Act will now be brought before the newly established Industrial Property Tribunal, consisting of various academics as well as Namibian legal practitioners knowledgeable within the field of intellectual property, which will hopefully result in well-informed, timeous decisions. Decisions of the Tribunal may further be appealed to the High Court of Namibia.
Another noteworthy amendment is the period of non-use which has been amended from five years to three years, effectively making it easier to remove trade marks that are not used in Namibia.
In respect of patents, the Act repeals the Patents and Designs Proclamation, 1923 and provides for the substantive examination of patents, whereas the previous legislation merely provided for a very rudimentary formal examination. The Act further introduces an extended patent term of 20 years. Any patent or design registered prior to the new Act will remain in force for the unexpired portion of the period of protection.
Lastly, the Regulations to the Act provide for revised prescribed forms and an increase of the official fees payable in respect of all forms of intellectual property.
Reviewed by Ilse du Plessis, a director in ENSafrica's intellectual property department.
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