Mozambique Trade Mark Law - Declarations of Intention to Use (DIUs)
Reported changes in the due dates for filing Declarations of Intention to Use Mozambique trade marks have prompted the following review.
1) Mozambique’s industrial property law dates from 1999. The current code is that of 2006 and Article 127 requires a DIU to be filed for every trade mark registration every 5 years from the date of registration. International (Madrid) trade mark registrations designating Mozambique are included under Article 137. The required document:
a) Is a Declaration of intention to use.
b) Does not involve proof (or even a declaration) of actual use. Indeed, the Code does not provide for a trade mark registration to lapse due to non-use as it does, for example, in relation to trade names/insignia; but see 5(c) and 6 below. c) Does not require details of the intended use.
2) A Notice in the Official Bulletin of 15 October 2008 stated that “acceptance of an application for renewal of a mark shall exempt the owner from filing a Declaration of Intention to Use”; thus when a DIU falls due in the same year as renewal of the trade mark registration , the DIU need not be filed. That advice was initially accepted but:
a) The Notice is inconsistent with the clear requirements of the Code.
b) No such exception is mentioned in the guide entitled A criação de uma marca (creation of a mark), available on the Mozambique Industrial Property Institute (IPI) site in Portuguese.
c) We now conclude that in law, a DIU is due every five years whether or not it coincides with a renewal. It does not seem safe to rely on the Notice.
3) Articles 127.3 and 127.4 state as follows , the consequences of failure to file a DIU within the prescribed time:
a) Marks for which no declaration is submitted shall not be enforceable against third parties, and the Director General of the IPI shall declare the lapse of the registration at the request of any interested party or when third party rights are found to be prejudiced during proceedings for other registrations.
b) If the lapse of the registration has been neither requested nor declared, it shall once again be considered to be in force, provided that the proprietor of the mark -
i) Files a declaration of intention to use the mark; and
ii) Can prove that he is using it.
4) The subject of the prescribed time is complex:
a) The time prescribed by Article 127.2 for submitting a DIU is the year commencing six months before and ending six months after the expiration of the five-year period to which it refers. There is no statutory grace period or discretion to extend the prescribed time.
b) Because of Article 127.4 a DIU can be submitted after the prescribed time. There is no late fine and no special permission is required.
c) Nevertheless a DIU lodged after the prescribed time is irredeemably late. Filing a DIU late does not avoid the consequences of lateness, it only modifies them as explained in paragraph 5 below.
5) To amplify paragraphs 3 and 4, when a DIU has not been submitted within the prescribed time:
a) The registration does not lapse automatically. Nothing should happen unless:-
i) The owner seeks to enforce the registration against an infringer;
ii) An adversary applies to the DG to declare that the registration has lapsed on the ground of that failure; or
iii) The DG finds the registration to be an obstacle to a subsequent trade mark application; under current examination procedures this is unlikely to happen.
b) The validity of the registration can be partly repaired, if the owner lodges the DIU after the prescribed time but before the lapse has been declared or applied for.
c) But to render the registration completely safe it is necessary that, in addition to late-filing the DIU, the owner can prove that he is using the mark.
d) The standard or means of proof, for purposes of (c) above, are not stated. It does not appear from the Article that proof of use must accompany the late-filed DIU. On the contrary it seems that it will be sufficient if the owner, having late-filed the DIU, can then prove actual use if the registration is challenged later.
6) To view the question from a different angle:
a) There is no article of the Code, requiring the trade mark owner to prove use at any stage; but
b) If the owner once fails to lodge a DIU within the prescribed time, an adversary can apply to the DG to declare that the registration has lapsed on the ground of that failure; and
c) To defend the registration against lapse, the owner must then prove -
i) That the overdue DIU was filed before the application to the DG; and
ii) That the owner is using the mark.
d) Probably but not certainly, is using means that the mark is being used at the time of the adversary’s application to the DG.
7. Having regard to the above we now recommend:
a) That DIUs be filed at the five-year intervals required by law, whether or not the registrations fall due for renewal at the same time.
b) That those DIUs which have recently fallen due, but have not been filed because they coincided with renewals, should now be filed even if their prescribed times have expired.