眾律國際法律事務所

Introduction:

Language: English

Capital: Gaborone

Area: 581,730 km2

Population: 2,155,784 (2014)

Currency: Pula (BWP)

Religion: Protestant (66%)

Geographical situation: is a landlocked country located in Southern Africa.

International treaty membership:

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (December 5, 2006)

Convention Establishing the World Intellectual Property Organization (April 15, 1998)

Paris Convention for the Protection of Industrial Property (April 15, 1998)

Legislation:        

Industrial Property Act, 2010 (Act No. 8 of 2010)

Government Institutions:

Companies and Intellectual Property Authority (CIPA), Ministry of Trade and Industry

Type of trademark:

A trade or service mark is defined to mean any visible sign used or proposed to be used upon, in connection with or in relation to goods or services for the purpose of distinguishing, in the course of trade or business, the goods or services of a person from those of another.

The following trademarks can be registered : Trademarks, tradenames, collective mark, trade names.

Ground for refusal :

A mark shall not be registered if it is —

(a) incapable of distinguishing the goods or services of one enterprise or business from those of another enterprise or business;

(b) contrary to public order or morality;

(c) likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned, or their nature or characteristics;

d) a mark that consists exclusively of a sign or indication which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(e) a mark that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade in respect of the goods or services for which it is to be registered;

(f) a sign that consists exclusively of —

(i) the shape which results from the nature of the goods themselves,

(ii) the shape of goods which is necessary to obtain a technical result, or

(iii) the shape which gives substantial inherent value to the goods;

(g) identical to, or is an imitation of, or contains, as an element, an armorial bearing, flag or other emblem, a name, abbreviation or initials of, or official sign or hallmark adopted by, any State, intergovernmental organization or organisation created by an international convention, unless the competent authority of that State or organization has given authorisation for such bearing, flag, emblem, name, abbreviation or initials, official sign or hallmark to be used by an applicant for a registered mark;

(h) identical to, or confusingly similar to, or constitutes an imitation, a translation or a transliteration of, a mark or trade name which is well known in Botswana for identical or similar goods or services of another enterprise, or if it is well known in Botswana for goods or services which are not identical or similar to those in respect of which registration is applied for;

(i) identical to, confusingly similar to, or constitutes a translation or a transliteration of a geographical indication used to designate or distinguish the same goods for which the mark is to be used, or to designate different goods where the use of that mark would pose a risk of misleading the public as to the origin of the goods or services designated by the mark; or

(j) identical to a mark belonging to a different owner of a registered mark and already on the register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

Application content:

An application for the registration of a mark, accompanied by such fee as may be prescribed, shall be made to the Register in the prescribed manner and shall contain the following —

(a) a request, in writing, that the mark be registered;

(b) one or more reproductions of the mark;

(c) a list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification;

(d) identification of the applicant.

The filling date of application will be deemed established when the office has received all the elements.

Application process:

The office will first proceed to formal examination in order to check if the required elements were provided for application.

In a second time, the office will proceed to the substantive examination, in order to verify if the mark complies with the provision of the law, especially concerning ground for refusal.

Once the application has been verified and complies with the rules, the application will be accepted and published in the Journal, the publication is subject to payment of fees.

The publication will open a period for opposition, at the end of this period the right for trademark will be granted. Between the publication in the journal and the official granting of rights, the applicant will have full power over his mark.

Refusal:

The registration of a mark can be refused because it is subject to ground for refusal, the applicant did not provided the required elements for application, or upon opposition by a third parties. The non payment of fees is also a cause of rejection.

Rights of exploitation and related delay:

Registration of a mark shall confer on the registered owner, the right —

(a) to exclusive ownership of that mark;

(b) to prohibit third parties from using the mark; and

(c) to institute court proceedings against any person infringing his or her rights.

The registration in respect of a mark shall expire 10 years after the filing date of the application for its registration, but may, upon the written request and payment of the prescribed renewal fee, be renewed for consecutive periods of 10 years.

Transfer and conditions:

The rights in a mark may be transferred by cession, assignment, testamentary disposition or by operation of law.

Certification:

When the application grant the right for the mark, the Office shall issue a certificate of registration.

Withdrawal and cancellation:

The applicant may, at any time before his or her mark is registered, withdraw his or her application.

The mark can be invalidated upon opposition by any interested person if the mark is subject to ground for refusal.

Any invalidation of the registration of a mark shall be deemed to have been effective from the date of registration of the mark and a reference thereto shall be published by the Registrar in the Journal as soon as possible.

A mark shall be cancelled if it has not been used by the owner for three or more years.

Customs protection:

The owner of a mark shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person who infringes the mark by using that mark without his or her authorisation or by performing acts which make it likely that infringement will occur.

A plaintiff in proceedings for infringement shall be entitled to relief by way of an interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part, damages or an account of the profits derived from the infringement.

Sources:

Wipo.int: Industrial Property Act, 2010 (Act No. 8 of 2010)

Industrial Property Regulations, 2012 (S.I. 70 of 2012)

Vincent Lagier