Circular No. 371: Mozambique Trade Marks - The Need to File a Declaration of Intent to Use
Mozambique is a former Portuguese territory and the registration and maintenance of trade marks is dealt with in terms of the Industrial Property Code. This contains some characteristics of Portuguese law, in particular a reference to the need to file a Declaration of Intent to Use (DIU).
There are some ambiguities in the Code and as a result a draft amendment has been prepared and circulated for comment and it will be considered in due course. In the meantime the question that must be addressed is whether it is necessary for owners of trade marks to file a DIU in connection with their national and/or international trade mark registrations in Mozambique.
The Code is divided into several chapters, and it is Chapter IV which deals with trade marks. This, in turn, is divided into sections. Section II deals with ordinary trade marks, section III deals with special trade marks and section IV deals with international registrations.
The only mention of a DIU is in section III, which deals with special trade marks, that is to say an accelerated application/registration for local applicants who wish to use the national registration as the basis of an international registration. That said, the actual wording of the article is quite unclear and could suggest that DIUs be filed in connection with all types of trade marks.
The Code also contains contradictory time frames within which the DIU is to be filed. In terms of Article 112 (1) a DIU must be filed within five years from the date of registration. Sub sections (2) and (6), however, refer to seven year periods. In the absence of a definition it has always been assumed that the term "date of registration" is the date of filing, as this is the date used to calculate the due date for renewals in Mozambique.
Two of our partners recently met with the new Registrar of Trade Marks, Mr Fernando dos Santos, and discussed these issues in detail. The Registrar conceded that the wording of the present Code is unclear and ambiguous. However, despite this concession, he is of the opinion that DIUs should be submitted every five years for all trade marks, whether they have been filed in terms of section II, III or IV.
Following that meeting, the Registrar has issued an official circular to clarify and "give uniform treatment" to the determination of the due date. We have quoted from the official circular and provided our comments in brackets:
Article 112(1) of the Industrial Property Code of Mozambique (IPCM) should be interpreted to mean that the 5-year period for submission of the first, compulsory DIU runs from the date of registration of the mark. For the purposes of this notice, the registration date is the date when the application to register the mark is filed at the IPI (Intellectual Property Office). [This relates to "national applications" - Section II. The due date in such instances is five years from the date of application]
In the case of an international mark which, at the date of registration with the International Secretariat of WIPO, designated Mozambique as one of the countries where protection was sought, and registration of the mark has been awarded in Mozambique, article 112(5) of the IPCM should be interpreted to mean that the first, compulsory DIU should be submitted 5 years after the application to register the mark was filed at the International Secretariat of WIPO. [This relates to international registrations, designating Mozambique, lodged after the IPCM came into force on 4 July 1999. The due date for such trade marks is the date of the international application designating Mozambique]
In the case of an international mark whose extension to Mozambique takes place after its international registration, and the respective registration has been obtained in Mozambique, article 112(6) should be interpreted to mean that the first, compulsory DIU should be submitted 5 years after the date of the request to extend the international mark to Mozambique. For the purposes of this provision, the date of extension to Mozambique corresponds to the date of subsequent designation ("date de designation postérieure") as defined by the International Secretariat of WIPO. [This relates to international registrations extended to Mozambique after the IPCM came into force on 4 July 1999. The date of subsequent designation as defined by WIPO must be utilised for the purpose of determining the due date]
With regard to international marks giving rise to a request for extension to Mozambique before the entry into force of the IPCM, the time limit for submission of the first DIU shall run from the date when the IPCM entered into force. It is recorded that the IPCM was published on 4 May 1999 and entered into force 60 days thereafter. [This relates to international registrations extended to Mozambique before the IPCM came into force on 4 July 1999. It is unlikely that Mozambique would have been designated in many instances. In all such cases the due date will be determined from 4 July 2004.]
The Registrar has indicated that attention will be given to addressing the ambiguities in the Code by amending the current legislation. Until then, we recommend that DIUs be filed in order to safeguard current rights in Mozambique.
DIUs should be filed within a 12-month period commencing 6 months prior to the due date and expiring 6 months after the due date. We will shortly be sending out DIU reminders to those clients for whom we have trade marks on our records.
Owners of international registrations designating Mozambique should be aware that we have no records regarding such registrations. Therefore, if you would like us to file DIUs in connection with your international registrations, please do let us know. We will of course be happy to advise you further on any particular queries you may have.
Click here for Mozambique Filing Requirements