On 24 January 2018, Malawi's President assented to the new Trademarks Act, no. 2 of 2018 ("The Act"). The Act intends to modernise the protection of trade marks by incorporating new developments in the field of intellectual property in the country. The Act, once effected into law, will repeal the existing Trade Marks Act 1957 ("1957 Act"). The Act will come into operation on a date appointed by the Minister by notice published in the Gazette.
The Act expands the scope of protection by making provision for the registration of service marks (wrongly referred to as "serve marks" in the Act), collective marks and geographical indications. The 1957 Act only provided for the protection of goods marks and certification marks.
While the definition of a "mark" remains the same in the Act, the definition of a "trade mark" is extended to include non-traditional marks (i.e. non-visual signs or marks, any sign or mark that is sufficiently described in a clear, precise, intelligible and objective manner and which is capable of distinguishing the goods or services of one undertaking from those of other undertakings).
When applying for a trade mark in terms of the Act, unlike in the 1957 Act, a declaration of intention to use will be required at the time of filing the application. The grounds for refusing a trade mark application have also been modified. A trade mark can be refused based on earlier registrations covering similar goods or services, as well as well-known marks, amongst other things.
For the first time in Malawi, it will be compulsory to classify goods and services for the purposes of registration, in accordance with the Nice Classification as amended from time to time. Trade marks registered under the 1957 Act must, on renewal, be reclassified in accordance with the Nice Classification.
The registration term of a trade mark shall be for a period of 10 years and the trade mark may be renewed after every 10 years, perpetually. The registration date of a mark is deemed to be the date of filing of the application.
The transitional provisions of the Act provide that trade marks registered in terms of the 1957 Act shall remain in force until expiry and shall be deemed to have been registered under the new Act.
The Act, in Part IX, makes provision for the registration of marks in Malawi in terms of the Banjul Protocol and Madrid Protocol. Malawi is a signatory to the Banjul Protocol and the provision made for the Banjul Protocol in the Act means that the Protocol has now been incorporated into its national law. ARIPO registrations designating Malawi will therefore be valid once the Act comes into operation. While the Act also makes provision for the Madrid Protocol, Malawi is yet to ratify or accede to the agreement. The Protocol therefore remains unenforceable until such time as Malawi ratifies or accedes to the agreement.
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