Circular No. 368: Mauritius - Patents, Industrial Designs and Trade Marks Regulations 2004 - The Protection Against Unfair Practices (Industrial Property Rights) Regulations 2004

In our Circular No.356 and Circular No. 358, we reported the enactment of the Patent, Industrial Designs and Trademarks Act 2002, and The Protection Against Unfair Practices (Industrial Property Rights) Act 2002. The Acts were promulgated on 6 January 2003, but, hitherto, it has not been possible to enforce their provisions owing to the absence of the supporting Regulations, forms and fees.

In the interim, the Registry has remained open for business, and has continued to receive new matters, including service mark applications as provided for under the new Patent, Industrial Designs and Trademarks Act. However, without the necessary Regulations the Registry has been prevented from taking any further action, and all such cases, along with any applications that were pending before the new Act was promulgated, have been placed in suspense.

We are pleased to advise that, after a fifteen month hiatus, the Regulations for both Acts have at last come into effect, following their publication in the Government Gazette dated 10 April 2004.

It is to be hoped that the Registrar will begin the process of clearing the backlog of pending matters with minimum delay, and we shall, of course, be closely monitoring, and reporting on the progress of the many cases with which we have been entrusted.

As anticipated, a new scale of official fees is in operation. The increase is not substantial, and the new fees will be applied to all cases filed since 6 January 2003. In particular, patent annuity fees are payable for the first time, and additional class fees are now payable for trade marks, following the adoption of the Nice Classification.

We shall be contacting our clients on specific cases, in order to recover additional costs where applicable, and to advise on any other procedural issues arising.

The principal provisions of the new Act are described in detail in our earlier circulars, which may be found on our website www.spoor.com. However, for ease of reference, some of the more important features are repeated below:

Patents

Novelty -

  • Absolute novelty now required.

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 -

  • May now be claimed under the Paris Convention.

Examination -

  • Formal and substantive examination.

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 old law 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. Pending patent applications filed before 6 January 2003 will be dealt with in terms of the new Act.

Annuities -

  • Now introduced. Payable from third anniversary of filing of new-law patents. Will become payable on old-law patents.

Patent Cooperation Treaty -

  • Provision is made, although Mauritius is not yet a member.

Industrial Designs -

  • New provisions made for the registration of Industrial designs.

Trade Marks

Service Marks -

  • Now provided for.

Classification -

  • Now introduced, with the adoption of the 8th Edition of the Nice Classification.

Convention Priority -

  • May now be claimed under the Paris Convention.

Term and Renewals -

  • Successive ten-year, rather than 7 and 14 year terms. Subsisting registrations to complete their current terms, and thereafter to be renewable every ten years.

Use and Non-Use -

  • New provision for removal on grounds of 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 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, statutory protection granted against a range of defined, unfair practices in any field of industrial property.

The new Acts are to be warmly welcomed, as they provide for an effective, modern, system of intellectual property enforcement in a jurisdiction where imitation has become prolific. Through our local office, Spoor & Fisher Mauritius, we are actively engaged in a number of high profile anti-counterfeiting operations involving well-known brands, and we look forward to receiving enquiries from other proprietors whose rights are likewise being infringed in this commercially important market.

It is strongly recommended that the proprietors of service marks, who have not yet sought registration under the provisions of the new Act, consider doing so without delay. Under our management and guidance, Spoor & Fisher Mauritius offers very competitive rates, and tariffs are always available upon request.

All instructions and enquiries should be directed to Spoor & Fisher Jersey, and clients may either approach their usual contacts there, or e-mail info@spoor.co.uk

Click here for Mauritius Filing Requirements. Spoor & Fisher

Date published: 2004/07/13
Author: Spoor & Fisher

Tags: circular no 368 mauritius patents industrial design trade marks