Circular No. 370: Ghana - New Trade Marks Legislation
We are pleased to report that Ghana has substantially revised and modernised its trade mark law, by the enactment of a new Act, known as The Trade Marks Act, 2004. There are a number of developments brought about by the new Act that will be of particular interest to owners of trade mark rights and the more important changes are summarised below:
Service Marks are to be Registrable:
Provision has been made for the registration of service marks. This is a development that has been long awaited by owners of trade mark rights and brings trade mark law in Ghana in line with most other jurisdictions around the world. In addition, the new law specifically states that the classification of goods and services applicable in Ghana is the classification according to the Nice Agreement Concerning the International Classification of Goods and Services as last revised. This is a pleasing development in that all forty five international classes have been adopted.
Regrettably though, the Registry is not yet in a position to accept service mark applications, primarily due to the absence of suitable implementing Regulations. We will report further developments on this issue as soon as the position changes. In the meantime, we are of course happy to accept your instructions for service marks, which we will file as soon as the Registry is in a position to receive these.
Recognition of "Well-Known" Trade Marks:
Well-known trade marks are now recognised as being enforceable in Ghana. In particular, a trade mark which is identical to or confusingly similar to, or even a translation of a well-known trade mark, may not be registered by any person except the rightful owner of that well-known trade mark. It should be noted though that the new Act speaks of being well-known in Ghana.
Priority Under the Paris Convention:
Ghana has for some time been a member of the Paris Convention. However, the previous Trade Marks Act made no provision for the claiming of Paris Convention priority and in practice, priority could not be claimed. The new Act now makes provision for the claiming of Paris Convention priority rights.
Infringement and Fraudulent Marks:
Our clients will be pleased to know that the enforcement provisions in the new Act are substantial. In particular, the Act introduces for the first time in Ghana the concept of infringement of similar goods. Also, the Act makes the act of infringement a criminal offence, liable to criminal sanction.
What is particularly interesting for the enforcement of rights, is that provisions concerning Trade Descriptions and the application of forged or fraudulent marks have been incorporated in the Trade Marks Act. The Act makes it an offence to apply what is termed a "forged trade mark" to any goods or services. In this regard, a forged trade mark means any trade mark that is used without the consent of the owner of the trade mark. Further, any trade mark so nearly resembling another trade mark so as likely to deceive, can qualify as a forged trade mark. Again, the Act makes the application of a forged trade mark a criminal offence.
In addition, strong enforcement provisions have been introduced whereby the Commissioner of Customs, Excise and Preventive Service has been given the right to detain goods at Customs which are imported into Ghana if they bear a forged trade mark.
Under the old Law, the initial term of protection was seven years, while each renewal term was fourteen years.Both the terms of initial protection and subsequent renewal are now ten years.
Unfortunately, the new Act has a complicated provision for dealing with the renewal of registrations obtained under the old Act. In short, all registrations obtained under the repealed legislation must complete a 7 and 14 year cycle before they fall into the 10 year renewal cycle, even if the next renewal date is after 1 January 2004 (being the effective date of the new legislation).
Consequently the position is now as follows:
Registrations filed in terms of the new Act are valid for an initial term of 10 years, and may be renewed for successive periods of 10 years;
Registrations filed under the old Act, and already renewed at least once, complete the remainder of their 14 year renewal term and may thereafter be renewed for successive periods of 10 years;
Registrations filed under the old Act, but not yet renewed, must be renewed for the first time for a period of 14 years, but thereafter may be renewed for successive periods of 10 years.
Licence Recordal and Registered Users:
It is no longer necessary to record registered users at the Trade Marks Office. Indeed, the new Act has completely dispensed with the terminology "registered user", and instead speaks simply of a licenses. From this it will be gathered that provision is still made for the recordal of a licence contract and it should be noted that no licence contract is valid against third parties unless it has been filed at the Trade Marks Office.
Transitional Provisions and Implementing Regulations:
The new Act speaks in numerous places of implementing Regulations. As mentioned under the heading "Service marks are to be registrable" above, these implementing Regulations have not yet been published and at this stage we have no indication of when we may expect the Regulations to be published. The authorities are working on the Regulations, but we do not think that these can be expected before the end of 2004 at the earliest.
However, the new Act makes express provision for the Regulations made under the previous Trade Marks Act to be applied to the new Act insofar as possible, and until such time as new Regulations are enacted. Consequently, save for service marks, it is "business as usual" at the Registry.
We will of course keep you informed as to the progress of the new Regulations.
New Instructions, Requirements and Costs:
In the absence of new Regulations, there is no immediate change in documentary requirements. Consequently, to file new applications, we require as before a power of attorney (which may follow the application for filing) and ten prints of the trade mark, except for word marks in ordinary type. Also in the absence of new Regulations, there is no new schedule of fees and it is at this stage uncertain whether there will be any increase in official fees. It is of course to be hoped that the authorities will not try to establish any backdated fee increases, but the possibility remains that there may be some extra charges to be recovered at a later stage.
We are hopeful that this summary of the more important points of the Trade Marks Act will be of interest. We will of course be happy to advise you further on any particular queries you may have and your enquiries should be addressed to Spoor & Fisher Jersey.
Clients should approach their usual contacts there or e-mail email@example.com.
Click here for Ghana Filing Requirements.
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