Circular No. 356: Mauritius - The Patents, Industrial Designs and Trade Marks Act 2002; The Protection Against Unfair Practices (Industrial Property Rights) Act 2002

Mauritius - The Patents, Industrial Designs and Trade Marks Act 2002; The Protection Against Unfair Practices (Industrial Property Rights) Act 2002

The above-mentioned Acts have been passed by the National Assembly and received presidential assent. They are to come into effect on a date or dates to be fixed by proclamation, once the supporting Regulations, forms and fees, and the new Industrial Property Office have been established. No timetable has been fixed as yet. The principal features of the Acts as gazetted are:-

Patents

Novelty requirements - In terms of the existing Patents Act only local novelty is required. In general, the new Act requires absolute novelty.

Patentability - Diagnostic, therapeutic and surgical methods for the treatment of humans and animals are not patentable. However products for use in any such methods may be patented. Plants, plant varieties, animals and essentially biological processes for the production of plants or animals are not patentable

Convention Priority - Priority may now be claimed under the Paris Convention. The repealed Act did not permit this, although Mauritius has been a subscriber since 1976.

Examination - Formal and substantive examination by the Controller.

Compulsory Licences - Are provided for.

Duration - Twenty years from the filing date without the possibility of extension (against the present fourteen years, extendable for a further period of up to fourteen years). The term of an existing patent granted under the repealed Patents Act will be fourteen years, unless the patent has been extended, in which case the patent will remain in force for the unexpired portion of the period for which it was extended.

Annuities - Will be payable from first anniversary of filing new-law patents. Will become payable on old-law patents, which were not subject to annuities.

Patent Cooperation Treaty - Provision is made for the Patent Cooperation Treaty, although Mauritius is not yet a member. Industrial Designs

New provisions are made for registration of industrial designs, defined as any composition of lines or colours or any three dimensional form, or any material, which -

Gives a special appearance to a product of industry or handicraft;

Can serve as a pattern for a product of industry or handicraft; and

Appeals to and is judged by the eye.

Trade Marks Definition - Any visible sign capable of distinguishing the goods or services of an enterprise from those of other enterprises. Provision for service marks is new.

Classification - The Nice Classification, 8th edition, will apply. Multi-class applications are provided for. There is no classification under the repealed law. The Act does not provide for classification of subsisting registrations but this could be introduced as a condition of renewal, see below.

Convention Priority - Priority may now be claimed under the Paris Convention. The repealed Act did not permit this, although Mauritius has been a subscriber since 1976.

Examination, Advertisement, Opposition - Provisions are retained for these.

Term & Renewals - Successive ten-year terms instead of 7 then 14. Subsisting registrations will complete their current terms, then be renewable for ten years. Conditions may be attached to renewal, by the Regulations.

Use & Non-use - New provision for applications for removal on grounds of three years´ non-use, up to one month before application to remove.

Licensing - New provision for licences to be recorded, in order to be enforceable against third parties. Licences must provide for quality control.

Rights conferred by Registration - In conjunction with the Protection Against Unfair Practices (Industrial Property Rights) Act, statutory rights are now given for proprietors to sue for infringement, as well as criminal proceedings. A civil right to sue was not expressly conferred in the repealed Act, but was recognised by the courts.

Remedies for Unregistered Marks - In terms of Article 6bis of the Paris Convention, marks that are well-known in Mauritius are recognised and may be enforced, even if unregistered.

Protection Against Unfair Practices -   Detailed, even comprehensive statutory protection is granted against a range of defined, unfair practices in any field of industrial property; such as those likely to cause confusion or mislead; to damage goodwill or reputation; to discredit another´s enterprise or activities; or to misuse secret information.

Commentary -  

The repealed patent legislation dates back to 1875, and the trade mark law to 1868. The provisions, especially as regards trade marks and their enforcement, were lacking in detail that would assist proprietors, the authorities and the courts in acting against imitators, who had become prolific.

The new Acts are expected to provide an effective protection system and arsenal of weapons for defence of industrial property rights.

The introduction of service mark protection is especially welcome and is likely to lead to numerous new applications.

Simultaneous Acts were passed concerning geographical indications, and layout-designs of integrated circuits.

Detailed information and advice are available from Spoor & Fisher Jersey.

Click here for Mauritius Filing Requirements.

Date published: 2002/09/01
Author: Mac Spence

Tags: circular no 356 mauritius patents industrial design trade marks act