Rwanda published and enacted Law n° 055/2024 of 20/06/2024 on the Protection of Intellectual Property ("the new Act") on 31 July 2024, repealing Law n° 31/2009 of 26/10/2009. The new Act introduced some notable changes, which are outlined below.
Trade Marks
Acquired distinctiveness
Previously, the Minister or a competent court had to consider whether a mark acquired distinctiveness through use. In terms of the new Act, the Registry can decide whether a mark acquired distinctiveness through use, without the need for an applicant to approach a court.
Filing requirements
Previously, applicants were allowed to comply with any outstanding filing requirements within seven days from the date of being informed of such outstanding requirements. In terms of the new Act, the Registry has to inform the applicant that he or she is required to comply with any outstanding filing requirements within fourteen days of receiving the notification. Although there appears to be greater leniency in complying with the filing requirements, it should be borne in mind that it may affect the filing date, as the date of receipt of the outstanding filing requirements is considered to be the filing date.
Publication
In terms of the new Act, the Registry is required to publish an accepted mark within 30 days from the date of examination.
Opposition
The new Act provides for a 60-day opposition period, which is calculated from the date of publication.
Extensions of time limits
A request can be made to the Registrar, which should include reasonable grounds supporting the request, to extend the time limit up to the same amount of time as provided for in the Act, in relation to the correction of errors, completion of applications, filing appeals against decisions, opposing or applying for the cancellation of rights on the basis of non-use. This means that a 60-day extension of the prosecution or opposition period can be obtained, upon request.
Renewal and grace period
In terms of the new Act, the grace period during which an expired trade mark may be renewed belatedly has been shortened to 6 months from the date of expiry of the trade mark. The previous Act allowed for a 10-month renewal grace period from the date of expiry of the trade mark.
International application and registration of a mark
The new Act domesticates the Madrid Agreement and includes various provisions dealing with the application of the Madrid Agreement in the Rwandan context. The new Act guides the Registry on the verification, certification and submission of an international application for registration of a mark with WIPO. The new Act also sets out timeframes for the examination, acceptance and provisional refusal of international applications. In particular, the Registry is required to examine an international application and to notify WIPO within 12 months from the date of receipt of the international application. If the Registry fails to notify WIPO of the decision to accept or reject the registration within 12 months from the date of receipt of the international application, the registration is deemed to be accepted. The new Act states clearly that an IR designated to Rwanda has the same effect as a national application or registration.
Infringement
The provisions dealing with civil proceedings against the infringement of a registered mark have been slightly amended and now provide that the owner of a registered mark may initiate civil proceedings before the competent court against a person who uses, facilitates or procures the use of the registered mark without the owner's consent, or a person who facilitates or procures the use of a mark which is imitative of the registered trade mark.
Trade names and second level domain names
While the previous Act did make provision for trade names, the new Act now also makes express provision for second level domain names. A name or designation may not be used as a trade name or a second level domain name if a) its nature or its use is contrary to public order or morality; b) it is likely to mislead any person as to the nature of the company; c) it is identical or similar to a registered or well-known mark in Rwanda; d) it consists of a translation of a registered or well-known mark in Rwanda.
Copyright
Registration of copyright
The new Act makes provision for the registration of copyright. However, the registration of copyright does not seem to be a requirement per se, as Article 283 provides that a work is protected when it is original and that an original work shall be protected whether registered or not. Article 286 sets out the requirements and procedure for the filing of an application for registration of a work.
Duration of copyright
Generally, copyright endures for the lifetime of the author plus 50 years as regards the economic rights entailed therein. Copyright protection for works of applied art was previously also 50 years, but in terms of Article 311 of the new Act, these works are now only protected for a period of 25 years, from the date of the making of the work.
Patents
Voluntary amendments and opposition
The new Act includes amendments to the provisions related to voluntary amendments and gives an opportunity to oppose an application prior to grant.
Patentability
It also includes significant changes to the provisions on patentability of pharmaceutical products and software related inventions.
Design applications
Although it was previously possible to file an application including multiple designs in Rwanda, the new Act now specifically states that it is possible to include up to 100 designs in a single application. This is similar to various other African jurisdictions, such as OAPI and Nigeria, where multiple design filings are permitted.
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.