In line with its growing relevance as an upper middle-income economy, Mauritius' IP regime is getting a makeover.
A new Industrial Property Bill has been in the pipeline for some time, but was approved and passed by Parliament on 30 July 2019 and published in the Government Gazette on 10 August 2019. The Bill will come into effect on a date to be fixed by Proclamation. It is expected that this will occur in the coming months.
Although, the new Act will not bring about significant changes to the landscape of traditional national trade marks, it does provide welcomed statutory clarity on certain aspects. In this update, we touch on some of the changes with respect to trade marks, trade names and Geographic Indications (GI's). Some of the headline changes and clarification include the following:
- Recognition of certification marks and a procedure for the registration of such marks.
- Geographic Indications (GI's) are recognized as a separate form of Intellectual Property. Application, examination and opposition processes are prescribed, as well as provisions dealing with invalidation. The duration of protection of GI's will be 10 years.
- Specific provisions dealing with International Registrations (IR's) and to govern the registration process.
- The distinction between "service marks" and "goods marks" will fall away and both are simply recognized as trade marks.
- The functionary of the Industrial Property Office will no longer be known as the Controller, but as the Director.
- The creation of an Industrial Property Council which is to advise the Minister on Intellectual Property matters, and to ensure cooperation in the formulation of IP policies for industry.
- Cancellation applications will no longer be filed with the Controller, but with the Industrial Property Tribunal.
- Specific reference is made in respect of the refusal to register a mark if it is inherently non-distinctive.
- Express prohibition on the registration of:
- marks which solely designate the kind, quality, quantity, intended purpose, value, geographic origin, time of production or of rendering of services, or other characteristics of goods or services;
- shape marks where the shape results from the nature of the goods or provides a technical result;
- terms customary in the relevant trade; and
- marks the use of which would be contrary to law.
- Recognition of prior use (unregistered rights) as a basis for opposition.
- Introduction of Honest Concurrent Use applications.
- introduction of division of an application into two or more separate applications, each retaining their initial filing or priority date.
- Explicit provision for the amendment of goods and services in respect of a pending application, and amendment of a mark not substantially affecting its identity.
- Introduction of a 5-year prescription period on instituting infringement proceedings.
- Provision for a two-month period to correct a formalities defect in an application. The filing date allocated will be the date of correction and not the initial filing date.
- The deadline to respond to office actions and refusals has been extended to 6 months.
- Express six-month grace period for late renewals and provision for re-registration (restoration of a lapse registration) if done within one year of the expiry of the registration.
- Introduction of partial cancellation.
No changes are proposed to the current provisions dealing with trade names.
We are keeping an eye on the entering into force of the new Act. Businesses with a commercial interest in Mauritius should stay tuned and consider adapting their Mauritian trade mark strategies when the new Act comes into force, particularly with reference to International Registrations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.