A brand new Trade Mark Act, 2018 came into force on 1 October 2018 in Malawi. The Act introduces “modern” concepts such as service marks, collective marks and geographical indications, and gives recognition to the international registration system under the Madrid Protocol and the regional ARIPO registration system under the Banjul Protocol.
Perhaps the most exciting development brought about by the new Act is that trade marks can now be registered in relation to services. Previously, applicants were only able to register their trade marks in relation to goods, which left them exposed to the extent that they provide services rather than goods under their trade marks. As such, a flood of new service class applications are expected to be filed under the new Act to bridge this gap as soon as possible. We urge clients to do the same if Malawi is of interest to them.
Malawi became the 102nd member of the Madrid Protocol only days prior to the introduction of the new Act. The “domestication” of the Protocol by way of the new Act now allows trade mark applicants to designate up to 118 territories with a single international trade mark application.
In appropriate circumstances, the Madrid system provides a cost-effective option for trade mark owners who wish to register their trade marks in a number of territories. However, the Madrid system may not be the best option to follow in all circumstances. For instance, companies with complex group structures that require trade marks to be held by different entities within a group in different jurisdictions should not attempt to use this registration system. Also, if the home application (on which the international registration is based) is cancelled, all the designated territories may be adversely affected.
The Madrid system will only be implemented in Malawi on 25 December 2018.
There are currently 22 African jurisdictions that are members of the Madrid Protocol. However, the validity and enforceability of international registrations under the Madrid system in most of the member countries remains a concern, particularly where legislation to domesticate the Madrid system has not yet been passed. Careful consideration should be given to the effectiveness of international registrations before embarking on any trade mark filing projects in Africa.
Malawi has been a member of the ARIPO filing system for many years, without having any “domesticating” legislation in place. The new Act now allows applicants to file a single trade mark application designating one or more ARIPO member states. There are currently 19 member states, namely: Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. However, only five of these (Botswana, Malawi, Namibia, São Tomé and Príncipe and Zimbabwe) have made legal provision for the recognition and enforcement of ARIPO registrations domestically. A cautions approach should therefore be followed before this filing system is used.