Considering its antiquated trade mark legislation, last year Malawi passed the Trademarks Bill, 2017. On 24 January 2018, the Bill was assented to by the President and on 2 February 2018 the Trademarks Act no.2 of 2018 (hereinafter the “New Act”) was published.
The Act intends to modernise the protection of trade marks by incorporating new developments in the field of intellectual property in the country. The Act, once effected into law, will repeal the existing Trade Marks Act 1957 (“1957 Act”). The Act will come into operation on a date appointed by the Minister by notice published in the Gazette.
The New Act introduces protection and registration for, inter alia service marks, collective marks and geographical indications. In addition, it includes an expanded definition of “trademark” to include “non-visual marks” and “serve marks”. “Serve marks” are presumably meant to refer to service marks. This is borne out by Section 7 of the New Act, which states that the application for registration must contain, inter alia, “the goods or services for which registration is related”. This contrasts with Section 8 of the Current Act, which only provides for the registration of a trade mark in relation to goods.
When applying for a trade mark in terms of the Act, unlike in the 1957 Act, a declaration of intention to use will be required at the time of filing the application. The grounds for refusing a trade mark application have also been modified. A trade mark can be refused based on earlier registrations covering similar goods or services, as well as well-known marks, among other things.
For the first time in Malawi, it will be compulsory to classify goods and services for the purposes of registration, in accordance with the Nice Classification as amended from time to time. Trade marks registered under the 1957 Act must, on renewal, be reclassified in accordance with the Nice Classification.
The registration term of a trade mark shall be for a period of 10 years and the trade mark may be renewed after every 10 years, perpetually. The registration date of a mark is deemed to be the date of filing of the application.
The transition provisions of the Act provide that trade marks registered in terms of the 1957 Act shall remain in force until expiry and shall be deemed to have been registered under the new Act.
The Act, in Part IX, makes provision for the registration of marks in Malawi in terms of the Banjul Protocol and Madrid Protocol. Malawi is a signatory to the Banjul Protocol and the specific mention and provision made for the Banjul Protocol in the Act means that the Protocol has now been incorporated into its national law. ARIPO registrations designating Malawi will therefore be valid once the Act comes into operation. While the Act also makes provision for the Madrid Protocol, Malawi is yet to ratify or accede to the agreement. The Protocol therefore remains unenforceable until such time as Malawi ratifies or accedes to the agreement.
Some of the features of the New Act, in respect of trade mark oppositions, infringement, cancellation, penalties and offences:
Opposing of trade mark applications
In terms the New Act, a notice of opposition must be filed within 30 days of the advertisement of a trade mark application. The Current Act provides for the opposition of a trade mark based on limited grounds. Section 8, of the New Act, provides for further grounds of opposition, including that the mark applied for may not be misleading as to geographical origin, may not consist of the common name of goods or services or be identical to, or contain, armorial bearings, flags or other emblems. It is now also possible to oppose the registration of a mark based on a registered or unregistered well-known trade mark. The New Act sets out various factors that the Registrar may consider in determining whether a trade mark should be considered well-known.
Infringement of a registered trade mark
Once a trade mark is registered, the rights of the trade mark proprietor shall date back to the filing date of the application. It is possible to institute proceedings for trade mark infringement on the basis of a registered trade mark. Proprietors of unregistered trade marks are not without recourse, as Section 15 of the Act provides for the saving of vested rights and allows the proprietors of common-law trade marks to institute proceedings for passing-off.
Both infringement and passing off proceedings must be instituted in the Commercial Division in the High Court. One of the remedies for infringement includes, inter alia, a claim for reasonable royalties in lieu of damages.
The New Act provides for, inter alia, specific acts of infringement, such as the re-use of a proprietor’s labels etc. and for infringement where use of an identical or similar mark, in relation to any goods/services, may cause deception or association with the registered trade mark. This provision is in addition to the conventional “anti-dilution provision”, in Section 34(f) of the New Act, which provides for infringement, even where there is no confusion or deception, but where a proprietor can show that use of the offending mark will cause unfair economic prejudice through dilution of the distinctive character of the registered trade mark or take unfair advantage of the reputation of the registered trade mark or its rights holder.
Peculiar to trade mark legislation, is the provision in the New Act that a trade mark proprietor is also entitled to institute proceedings based on unfair competition, which includes acts that are contrary to honest practices in industrial or commercial practices. The right to institute action on the basis of unfair competition is generally understood to be a common law right and the scope of the is right is found in delict/tort. Accordingly, this provision appears to be superfluous.
Cancellation of a trade mark
Like the Current Act, the New Act provides for the removal of a trade mark based on non-use, for a continuous period of 5 years, after the date of registration. The New Act provides further that permitted use (use by a licensee) of trade mark shall be deemed use by the proprietor of the trade mark. There are, however, specific conditions for use to be considered licenced use, including the requirement of effective control by the licensor of the quality of the goods or services of the licensee in connection with which the trade mark is used.
Offences and Penalties
The New Act provides for a series of offences and penalties relating to the registration of a trade mark, such as the falsification of entries in the trade marks register, false representation of a registered trade mark and the forgery of trade marks. The penalties range between K3,000,000.00 (USD 4200, current rate of exchange) and K10,000,000 (USD 13900), or imprisonment of between 5 and 10 years.
As indicated above, the Trademarks Act, 2018 shall come into operation on a date appointed by the Minister by notice published in the Gazette. New regulations may be drafted; however, the New Act allows the old regulations to apply, unless they conflict with the New Act. There is, at this stage, no indication when the New Act will come into operation.
Thembani Nkabinde | Candidate Attorney
Blain de Villiers | Partner
Mohamed Jameel Hamid | Associate