Commentary on New Industrial Property Code in Mozambique
The Council of Ministers of Mozambique approved a new Mozambique Industrial Property Code on 31 December 2015 (“the New IP Code”). The New Code, published under Decree no. 47/2015, will come into force on 31 March 2016, replacing the 2006 Industrial Property Code (the “2006 IP Code”).
Differences between the 2006 IP Code and the New IP Code relate mainly to revised time periods, re-wording and clarification of certain sections, administrative and format revisions. A limited number of substantive legal changes have been made. Unfortunately the New IP Code was not published for comment and concerns pertaining to issues such as delays in handing down decisions by the Administrative Courts have not been addressed. Short, unextendable deadlines for responding to official actions and provisional refusals have been retained.
A summary of the most important changes are set out below:
2. Administrative procedures (applicable to all subject matter)
2.1 Verification of Applications: In terms of the New IP Code, the deadline to submit outstanding documents (such as powers of attorney) or to provide information to the Industrial Property Institute (“IPI”) on request, is now thirty days, extended from fifteen days. This amendment must be welcomed as it often proved impossible to submit documents from abroad within fifteen days.
2.2 Appeals: In terms of the New IP Code, the deadline for appealing against the Director General's decision has been brought forward by thirty days. Appeals must now be lodged within thirty days of notification of the decision instead of sixty days. The New IP Code also makes provision for an appeal to the Minister of Industry against decisions of the Director General of IPI. Unfortunately, lodging an appeal to the Minister does not stay a potential “Judicial” appeal to the Administrative Court, as provided for in Article 20 of the New IP Code.
Article 70 of the New IP Code provides for the provisional refusal of a patent application by the Director General. A notification of such a provisional refusal, including the grounds, will be issued to the applicant within five days of the provisional refusal. The Applicant has thirty days in which to respond. No response by the applicant will result in the decision being made final.
4. Utility Models
The New IP Code provides for the provisional refusal of a Utility Model similar to patents, in Article 100. It also provides for opposition to the grant of a Utility Model.
5. Industrial designs
The opposition procedure for Industrial Designs has been clarified in Article 113 of the New IP code.
Article 115 of the New IP Code provides for the provisional refusal of a design application by the Director General. A notification of such a refusal, including the grounds, will be issued to the applicant within five days of the provisional refusal. The Applicant has thirty days in which to respond. No response by the applicant will result in the decision being made final.
In terms of Article 113, any person who feels that the grant of an Industrial design would be detrimental to him is entitled to oppose the design application. The opposition must be made within thirty days of the date of publication of the Industrial Property Bulletin containing the notice of grant. This period may be extended once only for a maximum of thirty days, at the request of the interested party. The IPI must send a copy of the opposition to the Applicant, and the Applicant must respond to the opposition within a period of thirty days (which is extendible for a further thirty days). The director general of IPI shall decide on the outcome of the opposition and shall notify his decision to the interested parties. If the Applicant fails to respond, the application shall be treated as surrendered.
6. Trade Marks
6.1 Article 121 (i) of the New IP Code extends comparison of marks upon examination to “related” or similar goods and services.
6.2 Opposition deadlines have been brought forward by thirty days. Thus, oppositions must be lodged within thirty days of advertisement and a further extension for another sixty days is provided for. In terms of the 2006 IP Code, the opposition deadline was sixty days extendable by a further sixty days.
6.3 Declarations of Intent to use (“DIU”). It is no longer essential to show that the declaration of intent to use a mark should relate to all goods or services included in the registration. Furthermore, the due date for submission of DIU’s in respect of International Registrations has also been clarified. Article 162(3) of the New IP Code reads:
1. The provisions of article 138 of this Code (the section dealing with DIU’s) shall apply to international marks.
2. Time limits for filing declarations of intentions to use shall run from the date of the international registration.
3. For the purposes of the preceding paragraph, the international registration date shall be the inscribed date of the international registration of the trademark application by the International Bureau of WIPO in its database.
Thus, DIU’s must be lodged every five years, calculated from the original application date of the International Registration. In terms of a previous ruling, the date was calculated from the date of designation of Mozambique. Uncertainty still prevails as to whether it is essential to lodge a DIU if the date coincides with the renewal date of the trade mark.
7. Miscellaneous provisions
7.1 The New Code makes provision for the registration of “Names of Establishment”. This relates to the registration of business names.
7.2 The IPI Bulletin will now be published monthly, instead of every two months.