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:-

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.

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.

of honest concurrent use or other special circumstances may be permitted.

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.

an application into two or more applications, which will then be treated

independently, retaining the original filing date.  (Useful when

facing citations)

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.

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:

provisions dealing with exhaustion of rights.

mark is used to truthfully indicate the goods or services originating from the

owner of the trade mark.

a trade mark to provide information regarding the intended purpose, use of

compatibility of the product or services, including spare parts.

of a descriptive nature

name / place of business provisions similar.

The proviso to the defences is that:

must be compatible with honest practice and the mark must not be used in a

manner that causes confusion.

use must not take unfair advantage of, or be detrimental to, the distinctive

character or repute of the mark.

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.

cancellation, and expressly states that a cancelled trade mark

registration is void ab initio

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.

for the adjudication of IP matters defined.

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.

Registrations via the Madrid Protocol are set out, although Mauritius has

yet to join the Madrid system.

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

[email protected]