Mozambique: importance of filing a Declaration of Intent to Use

A peculiarity of the trade mark system in Mozambique is that the owner of a registration needs to file a Declaration of Intent to Use (DIU) every five years - there is a six-month grace period. No actual use needs to be established, the trade mark owner simply needs to declare an intention. If the owner fails to file a DIU the registration remains valid, but it is unenforceable and it remains so until a DIU (this time with proof of actual use) is filed. Owners must note that a registration for which no DIU has been filed will be cancelled if a third party applies for cancellation - oddly in Mozambique there is no provision for cancellation for non-use, simply for failure to submit a DIU.

There is a growing trend of companies in Mozambique applying for the cancellation of trade mark registrations for which no DIU has been filed, seemingly as part of a scheme to acquire the trade marks of foreign companies. The owners of these trade marks often do not even know this is happening as the Intellectual Property Institute of Mozambique (IPI) does not send notice of applications for cancellation to the trade mark owners.

The legislation states that, in the case of a national registration, the five-year period date is calculated from the filing date, whereas in the case of an International Registration it is calculated from the international registration date.

Our advice is simple: take DIUs very seriously. We know that companies that have not used their trade marks are sometimes wary of filing DIUs. As explained above, the obligation is simply to file a statement of intent, not establish actual use. A failure to do so can, however, lead to the loss of the trade mark registration.

contact us for further information.

Date published: 15 August 2017
Author: Spoor & Fisher

Tags: Mozambique trade marks declaration of intent to use