眾律國際法律事務所

Introduction:

Language: Sotho, English.      

Capital: Maseru

Area: 30,355 km2

Population: 2,067,000 (2009)

Currency: Lesotho loti (LSL)

Religion: Christian (90%)

Geographical situation: is an enclaved, landlocked country in southern Africa completely surrounded by South Africa.

International treaty membership:

Madrid Agreement Concerning the International Registration of Marks (February 12, 1999)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (February 12, 1999)

Paris Convention for the Protection of Industrial Property (September 28, 1989)

Convention Establishing the World Intellectual Property Organization (November 18, 1986)

Legislation:        

Industrial Property Order 1989 (Order No. 5 of 1989, as last amended by Act No. 4 of 1997)

Government Institutions:

Ministry of Law and Constitutional Affairs

Registrar General's Office

Type of trademark:

Registrable as trademarks are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, colour combinations, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.

A mark is defined as any visible sign capable of distinguishing the goods or services of an enterprise. One can therefore conclude that sounds, smells and holograms do not comply with such definition because they cannot be represented visually. No express provision is made for the registration of colours, but such registration is in practice permitted.

The following trademark types are registrable: trademarks for goods and service, certification marks, trade names and collective marks.

Ground for refusal :

A mark cannot be validly registered,

a) if it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises;

(b) if it is contrary to public order or morality;

(c) if it is 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) if it is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initial of the name of, or official sign or hallmark adopted by, a State, intergovernmental organization created by an international convention, unless authorized by the competent authority of that State or organization;

(e) if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in Lesotho for identical or similar goods or services of another enterprise;

(f) if it is identical with a mark belonging to a different proprietor 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.

(g) if it is identical with, or confusingly similar to, or constitutes a translation of, a mark which is registered and well-known in Lesotho for goods or services which are not similar to those in respect of which the mark is registered, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark and provided that the interests of the owner of the registered mark are likely to be damaged by such use.

Application content:

The application for registration of a mark shall be filed with the Registrar and shall contain a request, a reproduction of the mark and 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. It shall be accompanied by the payment of the prescribed application fee.

The application may contain a declaration claiming the priority, as provided for in the Paris Convention, of an earlier national or regional application filed by the applicant or his predecessor in title, in which case, the Registrar may require that the applicant furnish, within the prescribed time limit, a copy of the earlier application, certified as correct by the office with which it was filed.

Application process:

The office will proceed to formal examination in order to verify all the required documents have been provided. In a second time it shall proceed to substantive examination to see if the mark is not subject to ground for refusal.

After those two examinations, the office shall publish the publication opening a three months period for opposition.

After the application is published and until the registration of the mark, the applicant has the same privileges and rights as he would have if the mark had been registered; however, it shall be a valid defence to an action brought hereunder in respect of an act done after the application was published, if the defendant establishes that the mark could not validly have been registered at the time the act was done.

After examination of opposition the Office shall register the mark, publish the fact of the registration and issue to the applicant a certificate of registration. Otherwise, he shall reject the application.

Refusal:

The application can be rejected for its non compliance to form requirements or if it is subject to ground for refusal.

The Office when opposition occurs, shall send forthwith a copy of such a notice to the applicant, and, within the prescribed period and in the prescribed manner, the applicant shall send to the Registrar a counter-statement of the grounds on which he relies for his application. If he does not do so, he shall be deemed to have abandoned the application.

Any decision taken by the Registrar under this Order, in particular, the grant of a patent or of a utility model certificate or a certificate of registration of an industrial design or of a mark or collective mark, or the rejection of an application for such a grant or registration, may be the subject of an appeal by any interested party before the High Court and such appeal shall be filed within two months of the date of the decision.

Rights of exploitation and related delay:

The use of a registered mark, in relation to any goods or services for which it has been registered, by any person other than the registered owner shall require the agreement of the latter.

The registered owner of a mark shall, in addition to any other rights, remedies or actions available to him, have the right to institute court proceedings against any person who infringes the mark by using, without his agreement, the mark as aforesaid or who performs acts which make it likely that infringement will occur. The right shall extend to the use of a sign similar to the registered mark and to the use in relation to goods and services similar to those for which the mark has been registered, where confusion may arise in the public.

The registration of a mark shall be for a period of 10 years from the filing date of the application for registration. The registration of a mark may, upon request, be renewed for consecutive periods of 10 years, provided that the registered owner pays the prescribed renewal fee. A period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Transfer and conditions:

Any licence contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the licence contract does not provide for such quality control or if such quality control is not effectively carried out, the licence contract shall not be valid.

Any change in the ownership of a patent, a utility model certificate, the certificate of registration of an industrial design or the certificate of registration of a mark or collective mark or in the ownership of an application therefor, shall be in writing and shall, at the request of any interested party to the Registrar, be recorded and, except in the case of an application, be published by the Registrar. Such change shall have no effect against third parties until such recording is effected.

A change in the ownership of the registration of a mark or in the ownership of a collective mark shall, however, be invalid if it is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics, or suitability for their purpose, of the goods or services in relation to which the mark or collective mark is intended to be used or is being used.

Certification:

The Office shall register the mark, publish the fact of the registration and issue to the applicant a certificate of registration.

Withdrawal and cancellation:

The applicant may withdraw the application at any time during its pendency.

The mark shall be invalidated if it is subject to ground for refusal, or for non use for a consecutive period of three years.

Customs protection:

Any vehicle, plant, material or goods liable to forfeiture under this Act, or which he has reasonable cause to believe are liable to forfeiture under the Custom Act, may be detained by any officer, magistrate, or member of the police force and the Director may, in his deseretion seize such vehicle, plan' material or goods.

Any goods liable for counterfeiting shall be sold, destroyed, or become state property, upon decision by Director of Customs.

Sources:

Wipo.int: Industrial Property Order 1989 (Order No. 5 of 1989, as last amended by Act No. 4 of 1997)

Customs and Excise Act, 1982 (Act No. 10 of 1982)

Vincent Lagier