The Government of the Democratic Republic of São Tomé and Príncipe deposited its Instrument of Accession to the Banjul Protocol on Marks on November 27, 2015. The Banjul Protocol will enter into force, with respect to the Democratic Republic of São Tomé and Príncipe on February 27, 2016 when it becomes a Contracting State under the Protocol and, therefore, eligible for designation. This brings the number of member states party to the Protocol to ten (10).

São Tomé and Principe islands lie off the coast of Western Africa, in the Atlantic Ocean. The islands are located in the Gulf of Guinea, about 300 kilometers off the coast of Gabon, just north of the equator.

General information

  • Area: 964 km2
  • Population: 0.2 million
  • Capital: São Tomé
  • Currency: Dobra
  • GDP: $ 316.9 million (2010)
  • Internet domain: .st
  • Languages: Portuguese (official language)
  • Working week: Monday - Friday
  • Exports: Cocoa; copra; coffee; palm oil
  • Imports: Machinery and electrical equipment; food products; petroleum products

International/regional conventions:

São Tomé and Principe is a member of the following international agreements:

  • Hague Agreement on Designs (since 2008)
  • Madrid Protocol on Marks (since 2008)
  • Paris Convention (since 1998)
  • Patent Cooperation Treaty (since 2008)
  • WIPO Convention (since 1998)

IP legislation:

Trade marks

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial Property

Patents

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial Property

Designs

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial Property

Copyright

  • Decree-Law no 46 980 of 1966 on Copyright Code

Related areas

  • Decree no 36 of 1997 on the Agreement between the Portuguese Republic and the Democratic Republic of São Tomé and Principe on the Mutual Promotion and Protection of Investments

St Thomas and Prince’s islands are off the coast of Western Africa, in the Atlantic Ocean, 340 km off the coast of Gabon straddling the equator.

Trade Marks

Law:

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial Property

São Tomé and Principe is a member of the Paris Convention and the Madrid Protocol.

The Industrial Property Law of São Tomé and Principe is silent on whether recognition is given to trade mark applications which are filed in terms of the Madrid Protocol which designate this country. It would appear, however, from the context of the provision in the Industrial Property Law which recognises and gives effect to São Tomé and Principe’s treaty obligations, that there was an intention to implement these treaties.

Applications may be filed as national applications and, in appropriate circumstances, claiming convention priority in terms of the Paris Convention. International applications filed in terms of the Madrid Protocol may also designate São Tomé and Principe.

Trade mark protection:

Provision is made for the registration of trade marks for goods and for services, and for collective marks.

No express provision is made for defensive marks.

Protection of well-known marks:

A mark cannot validly be registered if it is identical or similar to a trade mark that is well known in São Tomé and Principe for similar goods, and the use of the later mark is likely to cause confusion.

Types of trade marks:

The following types of trade marks are registrable:

  • product and service marks
  • collective marks.

Definition of a trade mark:

A mark is defined to mean any visible sign capable of graphic representation distinguishing the products or the service of a company from those of other companies.

Definition of a collective trade mark:

A collective mark means any visible sign capable of graphic representation distinguishing the origin or any other common characteristic, notably the quality of products or services of companies that use the sign under the control of the association owning it.

Classification:

The International Classification of Goods and Services (Nice Classification) is applied.  A single application may cover more than one class.

Convention priority:

São Tomé and Principe is a member of the Paris Convention. An applicant who has applied for a trade mark in another convention country is entitled to a priority right, to be accorded the same date as the first filed application.

Application:

An application is filed at the National Office of Industrial Property in Portuguese. The following information and documents are required:

  • full particulars of the applicant
  • authorisation of agent (simply signed), in Portuguese
  • list of goods or services to be covered, separated in accordance with the relevant classes
  • electronic reproduction of the mark in the size prescribed by the relevant laws
  • certified copy of the priority document (if applicable), with Portuguese translation.

Examination/procedure:

Prior to registration, the application will be subject to formal and substantive examination. If the application meets the formal and substantive requirements for registration, it will be published in the Official Journal for opposition purposes. The applicant will, if no opposition is filed, or if an opposition is unsuccessful, be notified that the application has proceeded to grant.

Opposition:

Third parties may oppose an application within 90 days of advertisement in the Official Journal. The Director of Industry may, under conditions determined by him, extend the opposition term.

Duration and renewal:

A trade mark registration is effective for an initial period of 10 years from the date of filing, and is renewable thereafter for similar periods subject to payment of the prescribed fee. A grace period of six months is allowed for such payment, provided that a penalty is paid.

Use requirement and cancellation:

A trade mark registration is vulnerable to cancellation if the registered mark has not been used within a period of five years from the date of registration, unless the owner of the mark proves that special circumstances made it impossible to use the mark and that there was no intention to abandon it.

Rights conferred by registration:

The registration of a trade mark gives the owner the right to authorise the use of the mark. Any use of the mark by third persons requires the consent of the owner. In addition, the owner has the right to institute judicial proceedings against anyone who violates his rights, inter alia by the use of an identical or similar mark on goods or services identical or similar to those in respect of which the mark was registered, if the result will be confusion of the public.

Common law rights:

The Law gives some recognition to common law rights inasmuch as protection is given to trade names against any unlawful action by a third party, even without registration of such trade name. However, the exclusive right to a trade mark is acquired by registration under this Law.

The Act also recognises unfair competition. Acts of unfair competition include:

  • any act that is contrary to the honest customs in the industry or in the commerce
  • any act that is likely to lead to confusion in the trade regarding the business, products or activities of a competitor
  • any false statement, in the course of trade, that is likely to harm the reputation of the business, goods or activities of a competitor
  • any statement that may mislead the public as to the characteristics, manufacturing process, purpose or quantity of goods.

Marking of goods:

The use of a false or misleading denomination of origin is illegal. It is advisable to follow the importer’s instructions or specific contract specifications.

Patents

Law:

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial Property

Patent protection:

Patent protection is available via a national filing.

Although São Tomé and Principe is a member of the PCT, the national laws have not yet been amended to cater for the PCT.  Accordingly, it is not clear whether enforceable rights will be obtained via PCT national phase filings in São Tomé. The Law does contain a general provision to the effect that the provisions of any international treaty concerning IP to which São Tomé and Principe is a party, are applicable and supersede national law. This provision provides a basis for PCT applications.

Patentable subject matter:

An invention is patentable if it is new, involves an inventive step and is industrially applicable. An invention is defined as the idea of an inventor which provides a solution to a specific technical problem.

The following inventions are not patentable

  • discoveries, scientific and mathematical theories
  • schemes, plans, rules or methods for doing business, performing purely mental acts or playing games
  • methods for  treatment of the human or animal body by surgery or therapy, as well as diagnostic methods (this provision shall not apply to products for use in any of these methods).

Types of applications:

Application for a patent may be made by way of –

  • a non-convention application, where the effective date is the filing date of the application
  • a convention application, where the effective date would be the priority date of the first-filed application under the Paris Convention
  • an international application under the PCT in which São Tomé is designated.

Application:

Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents.

Filing requirements:

  • full particulars of the applicant
  • power of attorney (simply signed), in Portuguese
  • assignment of invention (if the applicant is not the inventor)
  • specification (including claims, abstract and drawings), in Portuguese
  • certified copy of the priority document (if priority is to be claimed), together with a Portuguese translation
  • International Preliminary Report on Patentability (for PCT applications).

Novelty:

An invention is considered new if it is not anticipated by prior art. 

Absolute novelty is required. An invention is new if there is no anticipation by the state of the art. The state of the art encompasses everything that has been disclosed anywhere in the world by publication, or in São Tomé and Principe by oral disclosure, by use or in any other way before the filing or priority date.

Convention priority:

Whilst São Tomé is a member of the Paris Convention, the Law does not contain any express provision regarding claiming priority. Likewise the Law does not contain provisions in regard to PCT applications, apart from a general provision which recognises and gives effect to the treaty obligations of São Tomé and Principe.

Examination/procedure:

Applications are subjected to formal examination.

Duration and maintenance:

The term of a patent is 20 years from the filing date. An annual fee is payable as from the first anniversary of filing. A grace period of six months is allowed for the late payment of the annual fee subject to payment of surcharges.

Amendments:

The applicant may at any time request an application to be amended, provided the amendments shall not go beyond the disclosure in the initial application.

Working:

Working of a granted patent is provided for in the Law. However, the Act is silent regarding the deadline within which to work the invention.

The Law does provide that working means sufficiently exploiting the invention in an industrial manner; this is to be determined on a case-by-case basis.

Designs

Law:

  • Law no 4 of 2001 on Industrial Property
  • Decree no 6 of 2004 on Regulation on Industrial PropertyDesign protection:

Although São Tomé and Principe has acceded to the Hague Agreement, the national law has not yet been amended to provide for international applications designating São Tomé. Accordingly, it is not clear whether enforceable rights can be obtained in that manner. The Law does contain a general provision to the effect that the provisions of any international treaty concerning IP to which São Tomé and Principe is a party, are applicable and supersede national law.

Design protection:

Design protection is available by way of a national filing.

Registrable subject matter:

An industrial design is defined as any assembly of lines, colours or any forms of three dimensions, associated or not with lines and colours, provided that assembly or that form provides for a special aspect to an industrial or craft product, and can be used as a model for manufacturing an industrial or craft product.

Designs which serve solely to obtain a technical result are excluded from protection.

Application:

Non-convention and convention applications are filed with the Registrar’s office.

Foreign applicants must have a local address for service.

 Filing requirements:

  • full particulars of the applicant
  • power of attorney (simply signed), in Portuguese
  • deed of assignment (if applicable), with Portuguese translation
  • representations of the design
  • certified copy of the priority application (together with Portuguese translation).

Convention priority:

São Tomé is a member of the Paris Convention. Accordingly, priority can be claimed from an earlier application in a convention country, provided the application in São Tomé is filed within six months.

Novelty:

Absolute novelty is required. An industrial design will be new if it has not been disclosed anywhere in the world by a publication, or in São Tomé and Principe by oral disclosure, by use or in any other way prior to the filing or priority date.

A grace period of 12 months immediately preceding the São Tomé filing date or priority date (if convention priority is claimed) is provided, where disclosure of the design was made by the author or by his predecessor in title, or if the disclosure was as a result of abuse committed by a third party.

Examination/procedure:

Applications are subjected to formal examination.

Duration and maintenance:

The initial term of the design registration is five years, which is extendible upon payment of renewal fees for two further five year terms. A grace period of six months is allowed for the late payment of the renewal fee, subject to payment of surcharges.

Marking:

Not required.

Working:

No provisions.