Malawi: a new era for trade marks
In a move that seems to have caught some lawyers off guard, Malawi has published new trade mark legislation, the Trademarks Bill (2017). It is important to note that this is simply a bill, and it only becomes law once the president assents to it. The feeling amongst lawyers who practise in Malawi is that this may be some time off – not only does an institutional framework need to be established, but new regulations need to be drafted.
The Bill will replace the existing trade mark statute, the Trade Marks Act 1957 (the Act). So change was long overdue. Especially if you consider that the Act was based on the UK Trade Marks Act 1938. Not surprisingly, the Act has features that many trade mark lawyers now find odd: a limited definition of the term ‘mark’; no service mark protection; a register that is divided into Parts A and B (categorisation depends on the level of distinctiveness, and it determines the nature of the rights enjoyed); a degree of incontestability for Part A registrations after seven years; an enforcement right that is confined to the actual goods covered by the registration; and a registration term of seven years and a renewal of 14 years.
The Bill will look far more familiar to the modern trade mark lawyer. For example:
- It does seem that it will be possible to protect a far wider range of things as trade marks. Having said that, it is odd that the word ‘mark’ still has a very limited definition, whereas the term ‘trademark’ makes reference to a ‘non-visual sign’ that is ‘sufficiently described in a clear, precise, intelligible and objective manner’ and that is capable of distinguishing.
- Protection for services is possible.
- There is provision for the registration of collective marks, certification marks and Geographical Indications.
- Refusals can be on the basis of earlier registrations covering similar goods or services, as well as well-known marks.
- The infringement right seemingly extends to use in relation to any goods or services in the event of both confusion and dilution.
- The registration term is 10 years, as is the renewal term.
- Registrations can be cancelled on the basis of five years non-use, and use by a recorded licensee will be sufficient.
- There is an unfair competition action for acts that are ‘contrary to honest practices in industrial or commercial matters’, including those that cause confusion.
- There are criminal offences, with ten-year prison terms possible for infringements.
- There is provision for licence recordal based on quality control, and assignments without goodwill.
Part IX of the Bill is entitled International Registration of Trademarks. This part says that where Malawi ratifies or accedes to any international instrument relating to trade marks the Minister must do the following: publish an appropriate notice in the Gazette; declare that Malawi has become a member of the arrangement; and list that international instrument in the Second Schedule of the Bill.
The Second Schedule already mentions a number of international instruments, including the Banjul Protocol (the ARIPO trademarks treaty) and the Madrid Protocol. There is also a Third Schedule that goes on to set out the procedures relating to ARIPO trademarks, and a Fourth Schedule that sets out procedures for International Registrations (IRs).
There are two important aspects to this. The first is that, although Malawi is a signatory to the Banjul Protocol, the accepted view is that ARIPO trade mark registrations are in fact ineffective and unenforceable in the country. The reason for this is that Malawi has never formally incorporated the Banjul Protocol into its national law, something that so-called ‘common law countries’ like Malawi need to do. This specific mention of the Banjul Protocol in the Bill does seem to rectify this. It therefore seems that once the Bill becomes law ARIPO registrations designating Malawi will be valid.
The second aspect is that, despite the specific mention of the Madrid Protocol in the Bill, Malawi has yet to ratify this agreement. Until that happens it clearly cannot be possible to obtain trademark protection in Malawi through IRs. It might be expected that Malawi intends to sign up to the Madrid Protocol before the Bill becomes law.