YES AND NO | CONFUSION OVER SIERRA LEONE’S NEW TRADE MARKS ACT

Trade marks in Sierra Leone are currently governed by Trade Marks Act no 17, Cap 244 of 1960 (as amended by the Laws (Adaptation) Act no 29 of 1972) based on the old UK Act (the Old 1960 Act).  The Law is heavily outdated. However, a new Act, Trade Marks Act no 8 of 2014 has been drafted and there is much controversy about whether or not the New Act has yet come into force.

The New Act was signed by former President Koroma during September 2014 but was apparently returned to Parliament to sort out various technical difficulties before coming into force.  The Old 1960 Act is still in force and trade mark applications are still being filed using the old (pre 1938) UK Classification of Goods, which does not provide protection for any services.

The Assistant Registrar at the Sierra Leone Registry (OARG) recently announced that a “decision” was taken last month to bring the New 2014 Act into force. It is still not clear if the correct legal processes were followed.  The Registry has not issued any formal notification stating that the New 2014 Act is in force.  Also, no new Regulations have been drafted as yet.  Be that as it may, the country that has had its fair share of hardship (devasted by a Civil War, ending in 2002, and having suffered a severe Ebola outbreak, ending in 2016) desperately needs updated IP laws to provide adequate protection of IP rights.  Creating awareness on the importance of protecting IP rights, including trade mark rights, cannot be overemphasised as it creates an environment conducive to promoting business, innovation and creativity.  The promulgation of the New 2014 Act is long overdue.

Some anticipated changes in terms of the New 2014 Act include:

  • Moving over to the International Classification system;
  • Giving recognition to International Trade Mark Agreements signed by Sierra Leone (which may be interpreted to give recognition to International Registrations since the country is a member of the Madrid Protocol);
  • Collective marks will be recognised for protection;
  • The renewal term will change from 14 years to 10 years;
  • Recognition will be given to well-known marks;
  • An IP Tribunal will be established which will be given considerable powers, such as hearing appeals, invalidations, infringements and criminal offences;
  • Express recognition will be given to priority rights as provided in the Paris Convention;
  • Assignments will need to be published once they are recorded;
  • Licensing provisions have been included in the New Act;
  • Additional grounds for opposition have been included in the New Act;
  • More detailed provisions regarding infringement have been incorporated and infringements will be extended to similar goods, damages may be awarded for infringement and intentional infringement will be a criminal offence;
  • The new Act deals with unfair competition, trade names, false trade descriptions and has created many offences.

As mentioned above, no new Regulations have yet been drafted.  The New Act, however, provides that Regulations made under the Old 1960 Act shall remain in force until they are expressly revoked or amended. This will likely be problematic considering the Old Regulations refer to the old UK Classification system (which does not recognise services) and the New Act expressly provides that the Nice Classification system is to apply and makes reference to, protection of services.

Currently, there is confusion at the Registry as to whether it should apply the Nice Classification system or continue to apply the old UK Classification system and it is not clear if protection of services will be possible in Sierra Leone until the Regulations have been amended.

The changes incorporated into the New Act are of importance to all practitioners and clients seeking to protect and enforce trade marks in Sierra Leone. We eagerly await formal notification as to when the New 2014 Act will come into operation.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Sierra Leone, please contact sierraleone@adamsadams.com.

CATHERINE WOJTOWITZ

Associate
Attorney

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SISIPHO NGOMA

Associate
Attorney

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