A 'trademark' is defined as a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing those goods or services from the same kinds of goods or services in the course of trade with any other person.
A trademark is territorial in nature. Trademark registrations are enforceable only in the country in which the trademark is registered. Consideration should therefore be given to the area in which a trademark will be used and where protection is required. As trademarks should be registered in countries where the goods or services are offered or intend to be offered, trademark protection in neighbouring states and countries may be advisable.
The Southern African Development Community (SADC) comprises Angola, Botswana, the Democratic Republic of Congo, Lesotho, Malawi, Mauritius, Mozambique, Namibia, the Seychelles, South Africa, Swaziland, Tanzania, Zambia and Zimbabwe (the Seychelles is still in the process of ratifying the SADC Treaty). As the SADC will substantially increase cross-border trade between its constituent countries, trademark protection in neighbouring African countries may be advisable. Trademark registrations should thus be considered in each African country and cross-border trade should be taken into account.
Each African country is governed by its own laws regarding intellectual property, including trademark registrations. An in-depth knowledge of these laws and regulations is therefore necessary for best practice.
Understanding the administrative requirements of a country's trademarks office can ensure the proper registration and maintenance of a trademark; the registration will remain in force for a period of seven to 14 years.
If maintained properly, trademark rights will last indefinitely. However, trademark rights depend on the continued use and renewal of the trademark within the relevant timeframe. Each country has a designated timeframe within which a trademark renewal application must be filed by submitting the required form and paying the required renewal fee.
The extent of the renewal period for trademark rights varies from country to country. It is calculated from either the application date or the registration date, depending on national laws and regulations. In most countries, a renewal application may be filed six months before the renewal due date without shortening the original renewal period. As few countries accept online applications, most trademark renewal applications are filed in hard copy.
Not all African countries allow the late filing of a renewal application (ie, within a grace period), but in some African countries it is possible to file a restoration application if the proprietor of the registered trademark was unable to meet the renewal deadline through no fault of its own and despite all diligence to do so. The restoration of a trademark remains at the discretion of the registrar or commissioner of trademarks and will be considered only after the required documentation has been filed and the applicable fees have been paid. Whether a late renewal application or a restoration application is filed, it is substantially more expensive than filing the renewal application before the renewal due date.
In most African countries, a trademark registration is vulnerable to expungement and removal from the trademark register if, among other things, it is not used within approximately three to five years. The provision for removal of a trademark registration on the basis of non-use will not apply if the non-use was due to special circumstances in the trade and there was no intention on the part of the proprietor to abandon the mark. It is therefore important that a record of a trademark's use be kept for the rights to be properly protected, and in certain countries (eg, Mozambique) that a declaration of intention to use be published every five years from the application date.
All countries that do not have a formal trademark registration process (eg, the Maldives) should publish cautionary notices. A cautionary notice is an advertisement published at regular intervals in a leading national newspaper. Cautionary notices should be published every two to three years. The cautionary notice will inform third parties that, although the country does not have a formal trademark registration process, the advertised mark is considered to be the trademark of the person or business advertising the mark.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.