Malawi: A new era in trade mark law
We have previously reported on the Malawian Trademarks Bill 2017. This bill officially became law on 1 October 2018, in the form of the Trademarks Act, 2 of 2018 (the Act) – this development was in fact only announced in an Extraordinary Gazette dated 24 October 2018 (although signed on 21 September 2018).
As we previously reported, new trade mark legislation was long overdue. The Act replaces the outdated Trade Marks Act 1957, which was based on the UK Trade Marks Act 1938. The old legislation had a number of features that are practically alien to present-day trade mark lawyers.
Features such as:
- A very limited definition of the term ‘mark’.
- A system of registration limited to goods - so no service mark protection.
- A register divided into two parts, Part A and Part B - Part A was for marks that were adapted to distinguish, Part B for marks that were capable of distinguishing, with Part A registrations enjoying stronger rights, as well as a degree of incontestability after seven years.
- A very limited enforcement right, one that was confined to the actual goods covered by the registration.
- A registration term of seven years and a renewal term of 14 years.
The Act brings many welcome changes. For example:
- The concept of a trade mark is far broader – the term ‘trade mark’ makes reference to a ‘non-visual sign’ that is ‘sufficiently described in a clear, precise, intelligible and objective manner’, and that is capable of distinguishing.
- Protection for services is now possible.
- There is provision for the registration of collective marks, certification marks and Geographical Indications.
- Refusals can be on the basis of earlier registrations covering similar goods or services, as well as well-known marks.
- The infringement right extends to use in relation to similar goods or services.
- There are registration and renewal terms of 10 years.
- Registrations can be cancelled on the basis of five years non-use, and use by a recorded licensee will be sufficient.
- There is an unfair competition action.
- There are criminal offences, with ten-year prison terms possible for infringements.
- There is provision for licence recordal based on quality control, and assignments without goodwill.
The Act devotes a great deal of attention to international issues, in fact there is an entire part, Part IX, entitled International Registration of Trademarks. This part says that where Malawi ratifies or accedes to any international instrument relating to trade marks the Minister must take certain procedural steps, one of which is to list the international instrument in the Second Schedule of the Act. The Second Schedule of the Act makes reference to both the Banjul Protocol (the ARIPO trade marks treaty) and the Madrid Protocol.
This is very relevant because Malawi is regarded as a ‘common law country’, in other words a country that needs to specifically incorporate international treaties into national law before they become effective. More particularly, the relevance is as follows:
ARIPO: The accepted view has always been that ARIPO trade mark registrations are ineffective and unenforceable in Malawi because the country has never formally incorporated the Banjul Protocol into its national law. This specific mention of the Banjul Protocol in the Act does seem to rectify this. It seems that ARIPO registrations designating Malawi will in future be valid.
Madrid Protocol: Malawi deposited its instrument of accession to the Madrid Protocol on 25 September 2018, and the country will formally become a member of the international trade mark registration system on 25 December 2018. Malawi has also posted the necessary declarations to make it clear that the refusal period will be 18 months, that mere intention to use is sufficient, and that the recordal of licenses in the international register has no effect in Malawi. It would seem that international Registrations designating Malawi will be valid and enforceable.
One concern is that no implementing regulations have been promulgated. We understand that the thinking is that the regulations that existed under the old legislation will be applied to applications filed under the Act, until such time as new regulations are passed. This is far from ideal and we will have to see how this works out.
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