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:

1. Specific provisions dealing with exhaustion of rights.
2. If a mark is used to truthfully indicate the goods or services originating from the owner of the trade mark.
3. Use of a trade mark to provide information regarding the intended purpose, use of compatibility of the product or services, including spare parts.
4. Indications of a descriptive nature
5. Own name / place of business provisions similar.

The proviso to the defences is that:

1. Use must be compatible with honest practice and the mark must not be used in a manner that causes confusion.
2. 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

[email protected]