Commentary
regarding Trademark aspects in the Mauritius Draft Industrial Property Bill
The Mauritius Draft Industrial
Property Bill is open for comment. We are in the process of
studying the draft, but in the meantime we are able to offer the following
initial comments pertaining to Trade Marks in the Bill. This is a Bill which
seeks to consolidate all aspects of IP into a single piece of legislation.
The Mauritius Draft Industrial
Property Bill is open for comment [Download Here]. We are in the process of
studying the draft, but in the meantime we are able to offer the following
initial comments pertaining to Trade Marks in the Bill. This is a Bill which
seeks to consolidate all aspects of IP into a single piece of legislation.
A brief summary of the changes is outlined below:-
- Definition of a trade mark has been
extended to also cover collective and certification marks. Specific
grounds for the invalidation of a certification mark were added, but no
similar provisions for collective marks are included. - Grounds for refusal of a trade mark
expanded, the most notable being that a mark shall not be registered if it
consists exclusively of the shape of the goods or where the shape is
necessary to obtain a specific technical result. - Registration of a trade mark on the basis
of honest concurrent use or other special circumstances may be permitted. - The Bill provides that if a filing
formality deficiency is notified, the applicant has two months to correct
that deficiency. The filing date then becomes the date of correction
of the deficiency, rather than the original filing date. - The Bill also provides for the division of
an application into two or more applications, which will then be treated
independently, retaining the original filing date. (Useful when
facing citations) - A remedy for unregistered marks is
provided – The earlier user of a trade mark that is neither registered nor
the subject of a pending application, will entitle the owner to oppose a
confusingly similar trade mark by presenting the relevant evidence of such
use. - International exhaustion of rights – the
right to be accorded by the registration of a trade mark shall be
exhausted once the product is put in the market by the registered
proprietor or with his consent in Mauritius or any other country in the
world.
The Bill provides for additional defences to
trade mark infringement, similar to the South African Act. The defences added
include:
- Specific
provisions dealing with exhaustion of rights. - If a
mark is used to truthfully indicate the goods or services originating from the
owner of the trade mark. - Use of
a trade mark to provide information regarding the intended purpose, use of
compatibility of the product or services, including spare parts. - Indications
of a descriptive nature - Own
name / place of business provisions similar.
The proviso to the defences is that:
- Use
must be compatible with honest practice and the mark must not be used in a
manner that causes confusion. - The
use must not take unfair advantage of, or be detrimental to, the distinctive
character or repute of the mark. - The Bill amends the provisions dealing
with trade mark infringement. It seems that only use of the identical mark
in respect of the identical goods / services is covered (section 98(1)).
The provisions dealing with similar marks or goods / services where not
retained. This seems to be an omission in the Bill. - The Bill makes provision for partial
cancellation, and expressly states that a cancelled trade mark
registration is void ab initio - New terminology – The head of the IP
Office will be the Director as opposed to Controller under the current
Act. The Bill also provides for the establishment of the Intellectual
Property Council to serve as a co-ordinating body between private and
public stakeholders for the effective national IP policy and enforcement. - The scope and composition of the Tribunal
for the adjudication of IP matters defined. - New provisions are made for registration
of Geographic Indications, defined as an indication which identifies any
goods as originating in the territory of a country, or a region or
locality in that country, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographic
origin. The nature of the right, scope and duration outlined. - The provisions relating to International
Registrations via the Madrid Protocol are set out, although Mauritius has
yet to join the Madrid system. - The Bill introduces a statutory
prescription period of 5 years for any proceedings in terms of the Bill.
For further information and
feedback or advice, contact the Adams & Adams team.
Megan Moerdijk | Partner