Summary

The new Mozambique Industrial Property Code was approved by the Council of Ministers of Mozambique by Decree no 47 of 2015, on 31 December 2015 (“the New IP Code”). It will come into force on 31 March 2016 and will replace the existing Industrial Property Code, Decree no 4 of 2006 (“the Old IP Code”). Trade marks, patents and other IP rights filed in Mozambique up until 30 March 2016 will still be subject to the Old IP Code.

Most of the sections in the New IP Code have been re-worded with the bulk of the changes relating to procedural and administrative issues. In particular, various changes entail either a shortening or extension or clarification of the time periods within which to oppose the granting of the different forms of intellectual property rights or comply with formalities. For example, the time period within which to oppose a trade mark application has been reduced from sixty to thirty days while, in respect of all IP rights, the deadline to submit outstanding documents (such as a power of attorney) has been extended from fifteen days to thirty days.

The New IP Code also envisages a few substantive changes, however. Insofar as trade marks are concerned, one significant development is that the New IP Code gives recognition to ARIPO registrations by way of “Regional Registrations”. This is to prepare Mozambique for when it accedes to the Banjul Protocol. The Mozambique authorities are still in the process of negotiating Mozambique’s accession to the Banjul Protocol.

With regard to the sections of the New IP Code dealing with patents, utility models and designs, these now make provision for the Director General to issue provisional refusals. Certain additional exclusions from protection have been incorporated into the New IP Code.

Geographical Indications and Designations of Origin (already recognised in the Old IP Code) now have a more comprehensive legal framework and the New IP Code makes provision for Industrial Property Rights to be pledged and given as security. New (increased) official fees are expected to come into force likely between April and June this year, once approved by the competent Ministries. A more detailed overview of the New IP Code is included below.

Industrial Property Rights provisions:

Definitions for “Franchise Agreements”, “Technology Transfer Agreements”, “Designations of Origin”, “Intellectual Property” and “Establishment Names (relating to the registration of Business Names)” have been incorporated into the New IP Code. The definitions for “Geographical Indications” and “Insignias of an Establishment” have changed.

A new section has been incorporated into the New IP Code relating to the “Effects of Registration of Industrial Property Rights”. Regarding formal requirements, the deadline to submit outstanding documentation/information (such as powers of attorney) has changed to 30 days from the date of notification (as opposed to 15 days provided for in the Old IP Code).

If an applicant is deemed to have abandoned an application for an Industrial Property Right, the New IP Code provides that the IPI shall always notify the applicant of the abandonment. Regarding the provision dealing with providing proof of an Industrial Property Right, the New IP Code provides that the relevant registration certificate should be provided within 15 days from the date of filing the request for proof. The Old IP Code prescribed no time limit in this regard.

The New IP Code provides that with reference to the issuance of “registration certificates” (“certidoes” – see note below)* of Industrial Property Rights, the certificates shall be delivered within 5 days from the date that the request is filed. No such time limit was imposed on the IPI (Industrial Property Institute) in terms of the Old IP Code in this regard.

The deadline to appeal against the Director General’s decision has changed to 30 days in terms of the New IP Code (as opposed to 60 days in the Old IP Code). The New IP Code also makes provision for an appeal to the Minister of Industry and Commerce against decisions of the Director General of IPI.

The New IP Code provides that annulments of Industrial Property Rights may be raised within 90 days from the date of publication of the final grant or refusal of the right. The Old IP Code, however, provided that the annulment may be sought within one year.

In the case of a third party wishing to lodge an opposition against the decision to restore an applicant’s Industrial Property Right, he must do so within 30 days of the publication of the notice of restoration, according to the New IP Code. The Old IP Code provided that this should be done within 2 months of the said publication.

The New IP Code now provides that Industrial Property Rights can be pledged and given as security and are subject to seizure and attachment.

Provisions relating to Patents:

Regarding the protection of patents, the definition of “State of the Art” has been amended in the New IP Code.

An additional exclusion from patentability has been incorporated into the New IP Code, namely, “projects, whatever their nature or area of application”.

Regarding the provision dealing with the inventor needing to inform his employer of his invention in writing, this now needs to be done “as soon as possible” in terms of the New IP Code. The Old IP Code provided that this should be done within 6 months from the date the invention was completed. The New IP Code provides that the employer now has 6 months from the date of communication of the invention by the employee to express his interest in the said invention and if he fails to do so within that time period, the employee shall have the right to assume ownership of the invention or transfer it to 3rd parties.

Regarding the supporting documentation to be filed for a patent, the New IP Code provides that this shall now be filed in triplicate, although this was always done in practice.

The New IP Code provides that the rights of a patent holder shall not extend to, inter alia, “acts done privately and on a non-commercial scale or for non-commercial purpose, provided that it does not significantly prejudice the commercial interests of the patent holder” and “acts relating to the preparation in a pharmacy of provisional medication for an individual in accordance with prescription given by a registered medical practitioner”.

The New IP Code provides for the provisional refusal of a patent application by the Director General. A notification of such provisional refusal, including the grounds thereof, should be issued to the applicant within 5 days and the applicant will have 30 days within which to respond. No response by the applicant will automatically result in the refusal being made final. No provision is made for obtaining an extension of time.

Regarding the provision dealing with the licensing of patent rights and where the proprietor of the patent may request the IPI to place the patent on offer to the public for licensing in the Industrial Property Journal, the New IP Code provides that this must be done within no less than 12 months. In terms of the Old IP Code, no such time limit was applicable.

Provisions relating to Utility Models:

Regarding the requirements for an invention to qualify as a utility model, the New IP Code has expressly excluded “pharmaceutical” and “agro-pharmaceutical” products from qualifying as a utility model.

The Old IP Code provided that the conversion of a utility model into a patent could be done at any time prior to examination stage of the application, however, the New IP Code provides that this may be done prior to publication of the application. The New IP Code also makes provision for the provisional refusal of utility models similar to patents, mentioned above.

The New IP Code provides that the time periods relating to opposing the grant of a utility model, reply to the opposition and reply to notices of provisional refusal shall be 30 days. The Old IP Code merely provided that the procedural processes in respect of applications for utility models should be more simplified and faster than the procedures for patent applications and no time limits were imposed. The New IP Code provides that if there is no opposition after 30 days of the date of publication, the utility model application shall be granted without any formalities as to substantive examination and this is not provided for in the Old IP Code.

Provisions relating to Industrial Designs:

The procedure relating to the opposition of industrial designs has now been clarified in the New IP Code. Any person who feels the grant of an industrial design would be detrimental to him may oppose the application within 30 days from the date of its publication in the Industrial Property Bulletin containing the notice of grant. The time period may be extended only once for a maximum period of 30 days. The opposition will need to be submitted in triplicate and substantiated by matters of fact and law. The applicant will need to respond to the opposition within 30 days, which period may be extended only once for a maximum period of 30 days. The Director General shall decide on the outcome of the opposition and shall notify the interested parties of his decision.

The New IP Code also provides for the provisional refusal of a design application by the Director General. The decision shall be made within 30 days and the applicant shall be notified of the provisional refusal within 5 days from the date of decision. The applicant is then required to reply to the notice of provisional refusal within 30 days, failing which, the refusal will become final.

Provisions relating to Trade Marks:

The New IP Code provides that the opposition period in relation to trade mark applications is now 30 days (as opposed to 60 days as provided in the Old IP Code). As such, an opposition must now be lodged within 30 days after the advertisement of an application in the Industrial Property Bulletin. An extension for a maximum period of 60 days may be applied for. No further extension is allowed. The applicant will need to respond to the opposition within 30 days and may seek an extension, only once, for a maximum period of 30 days. The Director General shall decide on the outcome of the opposition and shall notify the interested parties of his decision.

The New IP Code provides that if the Director General provisionally refuses an application, that the applicant should be notified of the provisional refusal within 5 days from the date of the decision. The Old IP Code provided that the applicant shall be notified “immediately” of a provisional refusal. The applicant shall reply to the notice of provisional refusal within 30 days, failing which, the refusal shall become final. The New IP Code provides that an applicant shall be notified of the final decision to grant or refuse the application within 5 days.

Entirely new sections (Articles 142 to 153) have been incorporated into the New IP Code regarding “regional registrations”, giving recognition to ARIPO registrations which amounts to a substantial amendment to the existing Trade Mark Law in Mozambique. However, it is important to note that Mozambique has not yet acceded to the Banjul Protocol.

The New IP Code provides that the opposition period in relation to International Registrations is now 30 days (as opposed to 60 days as provided in the Old IP Code). Another change specifically in relation to International Registrations is that the New IP Code now provides that the due date for submission of Declarations of Intention to Use (“DIU”) shall run from the date of notification of the International Registration. The Old IP Code provided that the due date would run from the date of the International Registration (as opposed to the notification thereof). The New IP Code also provides that the date of registration of an International Registration shall be the date that the International Bureau of the World Intellectual Property Organisation registers the application on its database.

Provisions relating to Designations of Origin and Geographical Indications:

Most of the “new” provisions incorporated into the New IP Code in relation to Designations of Origin and Geographical Indications were already foreseen in a separate Decree (no. 21 of 2009), but which has been revoked and replaced by the New IP Code.

In terms of the New IP Code, the IPI shall now keep an up-to-date register of registered Geographical Indications and Designations of Origin. It sets out who would have legal capacity to apply for registration of a Geographical Indication and Designation of Origin.

Additional requirements have been created in terms of the New IP Code, namely, “a single document” must now be lodged at the time of filing the application which should contain the following information: the name, description of the product, including specific rules relating to its packaging and labeling and a concise description of the geographical area; a description of the link between the product and the geographical environment or the geographical origin including, if appropriate, the specific elements in the product description or production method that justify such a link. If the application relates to a geographical area in a third country, the application for registration shall also comply with the conditions required and shall contain proof that the designation in question is protected in its country of origin. In addition, the application shall be written in Portuguese or if drafted in another language, it shall be accompanied by an official translation into Portuguese.

The New IP Code provides for additional specifications (in addition to that which was required in terms of the Old IP Code) to be complied with, namely, the specifications shall now also contain the description of the product, including raw materials, if any, and the main physical, chemical, microbiological or organoleptic characteristics of the product; the factors that prove that the product originates in the defined geographical area; the description of the method used to obtain the product and, if necessary, the unvarying and authentic local methods used as well as any information concerning its packaging. The specification shall also contain factors that justify the relationship between a specific quality or the characteristics of the product and the respective geographical environment/origin; the name and address of the authorities that check compliance with the provisions of the specifications and their specific responsibilities and any specific labeling rule for the product in question.

The New IP Code has created provisions to ensure that there is compliance with the specifications and provision has been made to apply for amendment of the specifications, particularly taking into account scientific and technical developments or to revise the demarcation of the geographical area. Minor amendments will also be allowed subject to IPI approval.

The New IP Code provides that once all the requirements have been fulfilled, the IPI shall cause the application for registration of a Geographical Indication or Designation of Origin, together with the single document, to be published in the Industrial Property Bulletin. In terms of the Old IP Code, Geographical Indications or Designations of Origin were not required to be published. The New IP Code makes provision for provisional protection of Geographical Indications and Designations of Origin after publication, before they proceed to registration. Some new grounds for refusal of Geographical Indications and Designations of Origin have been created in the New IP Code.

It is now possible to oppose an application for a Geographical Indication or Designation of Origin in terms of the New IP Code (which was not provided for in terms of the Old IP Code) within 30 days after the date of publication of the application in the IP Bulletin. The IPI shall send a copy of the opposition to the applicant, giving him notice to respond to the opposition within 60 days. The mentioned times periods may be extended only once for a maximum period of 30 days.

The New IP Code provides that when a Geographical Indication or Designation of Origin proceeds to registration, a registration certificate shall now be issued as proof thereof. In terms of the New IP Code, it is now possible for any natural person or legal person with a legitimate interest to apply for cancellation of registration of a Geographical Indication or Designation of Origin, by providing appropriate grounds.

Provisions relating to Trade names, Establishment Names and Establishment Insignias:

The opposition period in relation to Trade names, Establishment Names and Establishment Insignias has also been reduced from 60 days to 30 days in the New IP Code.

General provisions:

The Old IP Code provided that Industrial Property Rights belonging to non-profit organisations shall be exempt from registration fees. The New IP Code, however, provides that Industrial Property Rights belonging to such entities are subject to the formalities and charges provided for in the Code but the Director General may, upon a justified request by an interested party, decide on the exemption from payment of fees by non-profit organisations.

The New IP Code provides that the Industrial Property Bulletin shall be published on a monthly basis. The Old IP Code provided that the Bulletin would be published every 2 months by the IPI.

Conclusion:

The changes incorporated into the New IP Code are of importance to all practitioners and clients seeking to protect and enforce Intellectual Property Rights in Mozambique. Some minor errors were contained in the New IP Code and the rectified document shall be published in the Government Gazette soon. Watch this space. If you have any queries, please do not hesitate to contact us.