The purpose of trade mark registration is to offer an exclusive right to use a mark, a sort of monopoly, which must be restrained to a specific class of goods or services in most jurisdictions. To guarantee international uniformity in classifying such goods or services, the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Classification") was established by an Agreement concluded at the Nice Diplomatic Conference, on 15 June 1957.
As of February 2018, Malawi has a new trade mark law, the Trade Marks Act, 2018 (the "Act"), after it received Presidential assent on 24 January 2018. This Act repeals the Trade Marks Act of 1957. The Act now fully adopts the Nice Classification of Goods and Services thus making it possible to register service marks in Malawi. Previously, there was no provision for service marks in Malawi under the Trade Marks Act of 1957 leaving numerous companies in service orientated industries with a significant problem. It will now be mandatory to classify goods and services for the purposes of registration, in accordance with the Nice Classification as amended from time to time. All trade marks registered under the 1957 Act must, on renewal, be reclassified in accordance with the Nice Classification.
The previous Act did furthermore not provide for the registration of geographical indications and collective marks but provided only for certification marks. The definition of a 'mark' was itself limited. These lacunas are now a thing of the past with the adoption of the Trade Marks Act, 2018. The new Act brings protection and registration for service marks, collective marks and geographical indications. Additionally, it provides a broader definition of "trade mark" to include non-visual marks and service marks. Right owners will now be able to register non-visual signs or marks as trade marks as long as they are "sufficiently described in a clear, precise, intelligible and objective manner" and are distinguishable.
Other highlights of the new Act consist of the improved protection of well-known marks by incorporating the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. The new Act has officially domesticated the Banjul Protocol into Malawian law. While Malawi is a signatory to the Banjul Protocol, the latter was never incorporated into its domestic laws which led to doubts on the enforceability of ARIPO trade mark registrations in Malawi. With the incorporation of the Banjul Protocol in Malawian law, right owners who designate Malawi in an ARIPO registration can be sure to receive full protection. It will further be possible to file an application for trade mark registration under the Banjul Protocol with the Malawian Trade Marks Office. Moreover, the new Act caters for a series of strict penalties for infringements of registration, falsification and forgery of trade marks with ten-year prison terms possible.
The Act is a positive development and a breath of fresh air in the intellectual property law practice in Malawi.
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