In almost all African territories, where a registered trade mark is not used for a certain period of time, it may be vulnerable to be cancelled and removed from the Trade Marks Register, allowing other traders an opportunity to register and use the trade mark. Botswana is no exception.
In Botswana, a trade mark proprietor has three years after registration of the trade mark to use it, before it becomes vulnerable to cancellation. Non-use provisions ensure that trade mark proprietors are not afforded an unjustified and perpetual monopoly over a trade mark where they, in fact, don’t use it or don’t intend to use it in that particular territory.
Of course, there are a number of defenses upon which a trade mark proprietor can rely when their registered trade mark is under attack for non-use. These include proving actual use of the trade mark in the country in which it is registered or proving that special circumstances existed which prevented the use of the trade mark and where there was, in fact, no intention to abandon the use of the trade mark. In each of these scenarios, the responsibility to show actual use or the existence of special circumstances rests on the proprietor of the trade mark.
If a trade mark proprietor has used his trade mark in the territory concerned, such as Botswana, during the relevant period and can prove such bona fide use, he will succeed in saving his trade mark from cancellation. But, where a trade mark proprietor has no evidence of use, the situation becomes a lot trickier and he may choose to rely on the defense that special circumstances existed which prevented the use of the trade mark. But, what constitutes special circumstances in Botswana and how easy is it for a trade mark proprietor to rely on such a defense to cancellation of his trade mark registration?
The Registrar of Trade Marks in Botswana, in a recent judgment handed down in the trade mark cancellation matter of Philip Morris Brands Sárl v Westminster Tobacco Company (Cape Town and London) (Pty) Ltd in respect of the PARLIAMENT trade mark, found that the trade mark proprietor must prove that it was faced with “uncommon, unusual or exceptional circumstances” and that “it has to be explained and shown that those circumstances justified non-use of the trade mark”. Uncommon, unusual or exceptional circumstances which are independent of the will of the proprietor are deemed to be “special” and the Registrar and the Courts will not accept personal reasons for non-use as special circumstances.
In this case, Westminster (a company within the British American Tobacco group) unsuccessfully argued that litigation underway in South Africa concerning the same trade mark constituted special circumstances justifying why no use was made of the mark in Botswana.
Where the parties to trade mark cancellation proceedings are litigating over the same trade mark in a number of different territories or where the validity of the same registered trade mark is being disputed in another territory, this too does not constitute special circumstances. It is trite that trade marks are territorial. It is for this very reason that traders are required to register their trade marks in each country of interest separately (there is no blanket registration that covers all countries). Botswana is a sovereign state and based on the principle of territoriality in trade marks, it is logical that what is ongoing in one country with regards to a trade mark does not necessarily have any effect on the same trade mark in Botswana. Of course, there may be some exceptions depending on the circumstances but this is the very point of contention. The circumstances, are they special? Are they uncommon, unusual or exceptional? Trade mark litigation is something that can, effectively, be planned for and so whether one can rely on litigation in another territory as a special circumstance in defense of trade mark cancellation proceedings in Botswana is unlikely. The Registrar of Trade Marks certainly believes this to be the case.
The bottom line is, if you have registered your trade mark in Botswana (similar to that in most other territories), you need to use it otherwise you face the possibility of losing that trade mark registration.