Gambia - Industrial Property Law Developments
In January 2011, the Gambian Industrial Property Regulations, 2010 (“the Regulations”) came into effect. The Regulations incorporate prescribed forms and fees and supplement the Industrial Property Act (Chapter 95:03) (“the Act”). The Act, which came into force in 2007, is a consolidated code for the grant or registration of patents, utility models, industrial designs and trade marks.
Spoor & Fisher Jersey was instrumental in the drafting of the Regulations. On further review, the Regulations need expansion and modification. We have put forward our proposals to the Gambian authorities and a further publication is expected by June 2011. Assuming that the supplementary provisions will be as recommended, the main features will be:
- With effect from 2 April 2007:
- National patents, utility models and industrial designs are available in place of the United Kingdom-based system which applied previously.
- African Regional Intellectual Property Organization (ARIPO) patents, utility models and industrial designs are recognised but not ARIPO trade mark registrations. Gambia has not subscribed to the Banjul Protocol on trade marks and there is no plan to do so.
- Paris convention priority can be claimed.
- Service marks are registrable, classified under the International (Nice) Classification 9th Edition instead of the ancient 50-class classification of goods.
- The term of a trade mark registration has been reduced from 14 to ten years. Subsisting trade mark registrations are deemed to remain registered under the new system. They will become renewable for ten years at expiry of their current 14-year terms. That arrangement will end on 2 April 2017 when all such marks, remaining un-renewed, will be renewable.
- Licences can be created and must be recorded, in relation to all industrial property rights.
- With effect from 1 January 2011:
- Annuities become payable on subsisting, United Kingdom-based patents (there have been few, if any, national patent applications so far).
- It is possible to file multi-class trade mark applications.
- It is no longer a requirement to lodge a supporting power of attorney for new applications, renewals or post-registration recordals, or to lodge other supporting documents for recordals of assignment, changes of name and address etc.
- Advertisement requirements for trade mark applications are simplified. As before, they must be gazetted for opposition purposes on acceptance, but they no longer need to be published on filing.
- Substantial, official fee increases have been made. They are largely comparable with those prevailing in other jurisdictions and come hand-in-hand with the above improvements.
The Act was originally implemented without subsidiary legislation (regulations, forms and fees) and at a time when resources at the Gambian Registry were constrained. Those factors exacerbated delays in the processing of industrial property matters and the publication of trade mark applications. The Registry has since become better-resourced, enabling it to invest in new equipment and technology. Databases are being automated and existing case data is being migrated onto the new WIPO-sponsored Intellectual Property Administration System (“IPAS”). Arrangements and funds are in place to clear the 20-year backlog of trade mark advertisements. Given the volume involved, it is likely that exercise will take some time to complete.
Spoor & Fisher Jersey with the help of Spoor & Fisher Gambia, are in constant communication with the Gambian authorities. We continue to monitor developments carefully. Progress and/or issues will be reported as they evolve. The above is a summary of some of the salient points; it is not a definitive statement of the law.