With a view to overhaul and consolidate the legal framework of our industrial property, four new pieces of industrial property legislation have been recently enacted1.
Henceforth, patents, industrial designs and trademarks have been brought under a single umbrella statute, namely the Patents, Industrial Designs and Trademarks Act 2002. The Protection Against Unfair Practices (Industrial Property Rights) Act 2002 seeks to curb and deter unjust and oppressive practices within the industrial property field. Whereas protection of geographical indications is afforded under the Geographical Indications Act 2002, the protection of layout-designs is covered in the Layout-designs (Topographies) of Integrated Circuits 2002.
It is to be noted from the outset, that foreign applicants cannot apply directly under any of the industrial property enactment and need to be represented by a Mauritius law practitioner or approved agent.
Patents, Industrial Designs and Trademarks Act 2002
The object of the Act is to give effect to the engagement of Mauritius under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) by providing for the protection of patents, industrial designs and trademarks.
The Act establishes an Industrial Property Office ("IPO") under the Ministry of International Trade, administered by a Controller who is responsible for dealing with applications relating to marks, tradenames, patents, industrial designs, geographical designs or layout designs. Besides, an Industrial Property Tribunal would be constituted so as to handle all appeals against decisions of the Controller under any industrial property enactment and so as to construe, if need be, any provision thereunder.
The IPO is expected to reach a final decision on a patent application within 2 years from the date of the examination of the patent application.
A patent duly granted expires 20 years after the filing date of the patent application.
An international application under the Patent Cooperation Treaty, designating Mauritius is considered, under the Act as having as its filing date the international filing date granted under the said treaty.
The definition of "trademark" now includes collective mark, service mark and tradename.
An application for a trademark may contain a declaration claiming priority as per the Paris Convention of an earlier application filed by the applicant or his predecessor in title.
A trademark duly registered is valid for 10 years as from the date of the application for registration and may be renewed, subject to payment of a renewal fee and any prescribed condition, for consecutive periods of 10 years.
An industrial design is defined under the Act as being a composition of lines or colours or three-dimensional form or a material, whether associated with lines or colours.
The composition or material must give a special appearance and serve as a pattern for a product of industry or handicraft, and appeals and is judged by the eye.
An industrial design may be registered for an initial period of 5 years, thereafter for two further consecutive periods of 5 years upon payment of a renewal fee and compliance with any prescribed condition.
The Geographical Indications Act 2002
The Act lays down the procedure for registering geographical indications and covers only natural and agricultural products as well as handicraft and industrial products.
Any means used in the presentation of a product, suggesting that the product originates in a geographical area, other than its true place of origin, is unlawful even where the true origin of the products is equally indicated. Consequently, an aggrieved party may trigger proceedings under the Protection Against Unfair Practices (Industrial Property Rights) Act (see infra).
Specific provisions cover the concurrent use of homonymous geographical indications for wines and spirits.
Suffice it to mention that protection is afforded to a geographical indication, whether it has been registered or not.
The registration of a trademark containing a geographical indication with respect to a product not originating in the territory indicated may be refused or invalidated if such indication in the trademark purports to mislead the public as to the true place of origin of that product.
The Layout-Designs (Topographies) of Integrated Circuits Act 2002
The Layout-designs (Topographies) of Integrated Circuits Act 2002 governs the protection and registration of layout-designs. A layout design or topography cannot be protected under the Act if has been commercially exploited for more than 2 years.
A protection duly granted under the Act is valid until the end of the 10th calendar year.
The Protection Against Unfair Practices (Industrial Property Rights) Act 2002
Actions pertaining to unfair practices arising under any of the above industrial property legislation may be initiated under this statute.
As a general rule, any act or practice is deemed to be unlawful if it is, in the normal course of commercial or industrial activity, contrary to honest practice. An unfair practice may give rise to a claim in damages.
A practice would be unfair if:
- It causes confusion or misleads the public with respect to another’s enterprise;
- It damages the reputation of another’s enterprise, irrespective of whether there is confusion or not; or
- It amounts to a spurious or unjustifiable allegation aimed at discrediting the products or services offered by another enterprise.
It is to be noted here that likelihood of any of (a)-(c) occurring also amounts to an unfair practice under the Act.
A person contravening the provisions of the Protection Against Unfair Practices (Industrial Property Rights) Act, is liable to a fine of Rs.250,000 and a maximum term of imprisonment of 5 years.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.