CHANGES TO TRADE MARK LAW INTRODUCED BY LIBERIA IP ACT

 

The new Liberian Industrial Property Act, 2014 (“the New Act”) was approved by the Liberian House of Representatives on 14 June 2016 and is now in force.  The new Act repeals both the Copyright Act of Liberia 1997 and the Industrial Property Act of Liberia, 2003 (“the 2003 Act”) and provides for the protection of Copyright, Trade Marks, Geographical Indications, Industrial Designs, Patent and Utility Models and lay-out designs of Integrated circuits.

The Regulations are still being drafted and there is, accordingly, still some uncertainty regarding a number of aspects.

Types of marks

Liberia acceded to the Madrid Protocol in 2009, although its national legislation did not make provision for the filing of international trade mark applications.  One of the most significant developments is that the New Act makes provision for the filing of international applications under the Madrid Protocol. Provision is also made for honest concurrent user applications, the registration of non-traditional trade marks, including colour and shape marks and Certification marks, which is defined as:

a sign that is used to indicate the specified standards or characteristics, including quality, origin or method of production, have been complied with in respect of goods or services as certified by or under the control of the holder of the registration of the mark”.

The New Act has also redefines a “collective mark” as:  “any mark that belongs to a collective organization such as a cooperative, an association or a federation of industries, producers or traders”.

Registrability and opposition

The New Act provides for a wide range of circumstances in which a trade mark cannot be registered.

After the examination of an application, the application will be published for opposition purposes and any interested person may, within the prescribed period and in the prescribed manner, file with the Director General a notice of opposition. The Act does not, however, prescribe the opposition term and no Regulations, in this regard, have been implemented as yet.  The opposition term is therefore uncertain.

Infringement

The New Act entitles the registered proprietor to prevent an unauthorised third party from carrying out the following acts:

  1. affixing an identical mark on goods in respect of which the mark has been registered, or on goods associated with the services for which the mark has been registered, or on the containers, wrapping or packaging of such goods;
  2. suppressing or distorting the mark for commercial purposes after it has been affixed;
  3. manufacturing, selling, offering for sale, distributing or stocking material bearing the relevant mark or may be used as labels, containers, wrappings, packaging, business paper or advertising;
  4. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or service, where such use may cause a risk of confusion or association with the registered proprietor, provided that were an identical mark is used in relation to the exact goods in respect of which the mark has been registered, a likelihood of confusion shall be presumed;
  5. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or services, where such use may cause unfair economic prejudice to the registered proprietor, or take unfair advantage of, dilute or otherwise be detrimental to the distinctive character or advertising value of the trade mark, or would take unfair advantage of the reputation of the mark or registered proprietor; and
  6. using publicly, a mark identical or similar to the registered trade mark, even for non-commercial purposes, where such use may dilute the distinctive character or advertising value of the mark, or would take unfair advantage of the reputation of the mark or registered proprietor.

It is interesting to note that use of an identical or similar mark to the registered trade mark, in the course of trade for non-commercial purposes may constitute trade mark infringement. The New Act also purports to protect the advertising value of a trade mark.

The New Act stipulates a number of acts which shall be regarded as use of the mark in the course of trade, including the use of a mark in oral communications, irrespective of the means of communication or media used.

The New Act sets out various acts which shall not constitute trade mark infringement, such as the parallel importation of genuine goods, provided that the goods and its packaging or wrapping have not suffered any alteration or damage.

Cancellation and invalidation of registered trade marks

According to the New Act, any interested person may request the Director General to invalidate the registration of a trade mark in relation to some or all of the goods or services for which the trade mark has been registered.  Invalidation proceedings based on prior rights may, however, only be filed within 5 years after the date of registration of a mark, unless the mark was registered in bad faith. There is no time limit on filing a request for invalidation on any other ground.

A registered trade mark may be vulnerable to cancellation if:

  1. the mark has not been put to genuine use in Liberia, in relation to the goods and services in respect of which it has been registered, within 3 years after registration of the mark, and there are no justified reasons for such failure to use;
  2. substantive use of the mark has been suspended for an uninterrupted period of three years and there are no justified reasons for such failure to use;
  3. as a result of any act or failure by the registered proprietor, the mark has become a common name or the only effective designation available for use in the ordinary course of trade in respect of the goods or services for which it is registered; or
  4. as a result of the manner in which the registered proprietor used the mark, or allows the mark to be used, the mark is likely the mislead the public, particularly as to the nature, quality or geographical origin of the goods or services in respect of which it is registered.

If use of a registered mark commenced or resumed after the expiry of the three year period referred to above and not less than one month before cancellation proceedings is instituted, the registration will no longer be vulnerable to cancellation. The onus is on the registered proprietor of the mark to show that the mark has been used during the relevant period

Well-known marks

A well-known distinctive mark shall be infringed by the unauthorised use of a mark identical or confusingly similar to that distinctive mark, where such use would indicate a connection between the goods and services of the owner of the well-known mark or the reputation of the mark or its owner is likely to be damaged by such use.

The Act lists the following factors which shall be taken into consideration to determine whether a mark is well-known:

  1. the degree of knowledge of the sign among members of the relevant sector of the public within Liberia;
  2. the duration, scope and geographical extension of the use and/or promotion of the mark, inside and outside of Liberia;
  3. the existence and age of any registration or application for the mark in Liberia or elsewhere;
  4. actions taken to defend the mark, in particular any decisions made by national or foreign authorities, where the mark was considered to be well-known; and
  5. the amount spent on promoting the mark, the establishment, activity or relevant goods or services to which the mark applies.

The New Act expressly states that a mark will be considered to be well-known if it is generally known in one relevant sector of the public. The various relevant sectors of the public are referred to as:

  1. actual or potential consumers of the relevant type of goods or services;
  2. persons involved in marketing or distribution channels of the relevant type of goods or services; or
  3. the entrepreneurs in the business circles relating to the relevant type of goods, services, establishment or activity.

Licensing and assignment

Licensing of a registered trade mark is recognized and licence agreements must provide for the effective control by the licensor, of the quality of the goods or services of the licencee in connection with which the mark is used. If the agreement does not provide for such quality control, or such control is not effectively carried out, the agreement will be invalid.

Assignments shall be in writing and duly executed.

by Lize-Mari van Dyk | Associate