GAMBIA: New Industrial Property Act is Brought into Force
Earlier this year we opened an office in Gambia, and acquired the IP practice of the late Sam H A George.
The Gambian Trade Marks Act in force at that time was modelled on the pre-1938 British legislation. This is completely out-of-date and unsuitable for modern-day trade and commerce. In addition, there have been enormous backlogs (especially in the prosecution of trade mark applications) owing to the inability of the registry to have applications published in the Trade Marks Journal for opposition purposes.
We are, therefore, now pleased to be able to report that the Industrial Property Act (CAP. 95:03) was recently brought into force with effect from 2 April 2007. It repeals:
- The Registration of United Kingdom Patents Act 1925, which afforded protection in Gambia to granted UK Patents by re-registration locally.
- The United Kingdom Designs (Protection) Act 1936, which gave automatic local protection to subsisting UK design registrations; and
- The Trade Marks Act 1916, which established a national trade mark system based on the UK law before 1938 and so extended to goods, not services, under the early UK classification of 50 classes.
This new Act was first published in 1989 and republished in 1995 as CAP 95:03. Since then it has been awaiting enactment. One would have expected the necessary Rules or Regulations to have been prepared and brought into force simultaneously, but regrettably this is not the case.
The new law provides for the registration/grant of patents, utility models, industrial designs and trade marks; and the main features of the law are summarised below:
- The International classification system will now apply. Previously the old British classification system (50 classes of goods) applied.
- Service marks may be registered (previously marks could only be registered for goods)
- Multi-class applications seem to be envisaged (but we need further clarification on this)
- Paris convention priority, which was not available under the repealed law, may now be claimed.
- Examination is still to be on absolute and relative grounds. Provisions are retained for the publication of accepted trade mark applications and for oppositions.
- The term of trade mark protection is henceforth 10 years from date of filing. Subsisting trade mark registrations are deemed to remain registered under the new system and will be renewable at expiry of their 14-year terms until 2 April 2017 when all such marks, remaining un-renewed, will be renewable. (There are no provisions yet for re-classification of existing registrations).
- Licensing of trade marks is now catered for, subject to detailed control by the Minister.
- ARIPO patents are recognised but not ARIPO trade mark registrations because Gambia has not subscribed to the relevant Protocol.
As indicated above, no Rules or Regulations or Fees have been published in terms of the new Act. Until that happens the existing Trade Mark Rules, including prescribed forms and fees, must be presumed to remain in effect, mutatis mutandis until replaced by Regulations to be made by the Minister under the new Act.
The absence of any rules/regulations will pose many interesting questions. Furthermore, there is still an enormous backlog of unadvertised trade mark applications to process under the old system. One of our partners will be visiting our office in Gambia shortly, and will also meet with the Registrar and the Minister to emphasise the need for progress on these issues. We will provide a further report thereafter.
For the time being:
- We will be filing any new trade mark applications in terms of the international classification system.
- We recommend that clients and associates review their portfolios and consider the filing of service mark applications in terms of the new law.
- Applications filed since 2 April 2007 will probably need to be amended to reflect the international classification. However, we will be discussing this with the Registrar and will contact those clients affected by this in the near future.
Should you have any questions regarding the new Act in Gambia then please approach your usual contact at Spoor & Fisher Jersey or e-mail firstname.lastname@example.org or telefax + 44 1534 838 001.
Click here for Gambia Filing Requirements
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