眾律國際法律事務所

Introduction:

Language: English

Capital: Windhoek

Area: 825,615 km2

Population: 2,113,077 (2011)

Currency: Namibian dollar (NAD)

Religion: Christian (90%)

Geographical situation: is a country in southern Africa whose western border is the Atlantic Ocean. It shares land borders with Zambia and Angola to the north, Botswana to the east and South Africa to the south and east.

International treaty membership:

Madrid Agreement Concerning the International Registration of Marks (June 30, 2004)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (June 30, 2004)

Paris Convention for the Protection of Industrial Property (January 1, 2004)

Convention Establishing the World Intellectual Property Organization (December 23, 1991)

Legislation:        

Industrial Property Act, 2012 (Act No. 1 of 2012)

Government Institutions:

Business and Intellectual Property Authority (BIPA)

Trade and Commerce Department

Ministry of Trade and Industry

Type of trademark:

Any sign capable of being represented visually, including a device, name, signature, word, letter, numeral, figurative element, shape, color or container for goods, or any combination of such signs.

A trade mark may be limited in whole or in part to a particular colour or colours, and in case of any application for the registration of a trade mark the fact that the trade mark is so limited must be taken into consideration in deciding whether it is capable of distinguishing. If and in so far as a trade mark is registered without limitation of colour, it is deemed to be registered for all colours.

Ground for refusal :

Absolute ground for refusal:

A mark is not registrable and cannot be validly registered if –

(a) it is incapable of distinguishing the goods or services of one person from those of other persons;

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

 (c) it is inherently deceptive or the use thereof is likely to mislead or deceive the public or other traders, including as regards the geographical origin of the goods or services concerned, or their nature or characteristics;

(d) it consists exclusively of a sign or indication which serves, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time or mode of production of the goods or rendering of the services;

(e) it consists exclusively of a sign or indication which has become customary in the current language or amongst bona fide traders in regard to the goods or services concerned;

(f) it is identical with, or is an imitation of or contains as an element, an armorial bearing, flag or other emblem of, a name of or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organisation or organisation created by an international convention, unless authorised by the competent authority of that State or organisation;

(g) its use would be likely to cause confusion or would offend any class of person or would be contrary to law;

(h) the applicant for registration has no bona fide claim to proprietorship or no bona fide intention of using it as a trade mark; or

(i) the application for registration was mala fide.

Relative ground:

A mark is not registrable and cannot validly be registered if –

(a) it is identical with or confusingly similar to, or it or an essential element thereof constitutes a reproduction, imitation or a translation of, a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark and which is well known in Namibia, if the use of the mark is to be in relation to the identical or similar goods or services in respect of which the trade mark is well known, and such use of the mark is likely to cause deception or confusion;

(b) it is identical with or confusingly similar to, or it or an essential element thereof constitutes a reproduction, imitation or translation of a trade mark which is well known and registered in Namibia for goods or services which are not identical or similar to those in respect of which registration is applied for, if the use of the mark would be likely to take unfair advantage of, or be detrimental to the distinctive character or the repute of the well-known mark or the interests of the owner of the wellknown trade mark are likely to be prejudiced by such use, despite the absence of deception or confusion; or

(c) it is identical to a registered trade mark or to a trade mark in an application belonging to a different proprietor 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 trade mark as to be likely to deceive or cause confusion.

Application content:

(1) An application for the registration of a mark as a trade mark must be made in the prescribed manner and, in the prescribed manner, be filed with the Registrar and must contain the following –

(a) a request for registration;

(b) a representation of the mark; and

(c) a specification of the goods or services for which registration of the mark is requested; and

(d) an indication of the applicable class or classes of the International Classification of Goods and Services or any prescribed classification of goods or services.

An application for the registration of a mark as a trade mark must be accompanied by the payment of fees.

The Registrar must accord as the date of an application, the date on which the request for registration, the representation of the mark and the prescribed fee are lodged with the Registrar.

Application process:

The examination process contains an examination of form and a substantive examination.

The examination of form will verify if all the documents required for application were provided, and the substantive examination shall verify if the mark applied is subject to ground for refusal.

Once the application has been accepted, the Registrar will publish it in the Bulletin, opening an opposition period.

The Registrar must as soon as possible after receiving the notice of opposition, send a copy of the notice to the applicant who must, within such period send to the Registrar a counter-statement of the grounds on which he or she relies in support of his or her application.

If the applicant fails to provide a counter-statement, the application shall be deemed abandoned.

Where the applicant files a counter-statement, the Registrar must as soon as possible furnish a copy thereof to the person opposing who may, within the prescribed period and in the prescribed manner, lodge a replying statement.

The Registrar must, after hearing the parties and considering the merits of the case, decide whether or not the mark should be registered.

After the publication of the application and until the registration of the mark, the applicant has the same right to damages as he or she would have had if the mark had been registered, but it is a valid defence to an action brought under this section in respect of an act done after the application was published, if the mark has in fact not been registered or if the defendant proves that the mark could not validly have been registered at the time the act was done.

Refusal:

Where the Registrar has advised the applicant of a decision and unless within the prescribed period from the date of the advice or from the date on which grounds for the decision were furnished whichever is the later date, the applicant submits arguments, in writing, or applies for a hearing or an extension of time, the application is deemed to have been abandoned.

If the mark is not considered as distinctive but the applicant refuse to do amendment or modification, the application shall be deemed abandoned.

If the mark was refused since its subject to ground for refusal, or if an opposition was ruled in favor of the opponent, the registration of the mark shall be refused.

Any decision taken by the Registrar under this Chapter, including in regard to the registration of a trade mark or a certification trade mark or a collective trade mark, or in regard to the rejection of an application for such a registration, may be the subject of an appeal to the Tribunal by an interested party in the matter before the Registrar, and such appeal must be filed and prosecuted as prescribed.

Rights of exploitation and related delay:

The registered owner of a trade mark has the right to exclude, and to institute legal proceeding to all other persons from using the registered trade mark in the course of trade unless that other person has been authorised, in writing, to do so by the registered owner of that mark.

The registration of a trade mark is valid for a period of 10 years from the date of the application for registration. It can be renewed for 10 years each time, and has a 6 month grace period after the expiry of protection for renewal.

If that delay is over and the ex right owner can apply for restoration if the Registrar is satisfied that the omission was unintentional and that no undue delay has occurred in the making of the application, he or she must publish the application for restoration in the bulletin in the prescribed manner, after which any person may within such period as prescribed, give notice of opposition to the restoration of the trade mark registration.

Transfer and conditions:

The registered owner of a registered trade mark or a trade mark which is the subject of an application for registration may transfer his or her rights in the registered trade mark or application by way of cession, assignment or testamentary disposition, either with or without the goodwill of the business concerned, or ownership or rights in such trade mark or application may be transferred by operation of law.

Certification:

the Registrar must register the trade mark in the appropriate register and issue to the applicant a certificate of registration.

Withdrawal and cancellation:

The applicant for a trade mark registration may, at any time before the mark is registered, in the prescribed manner withdraw, restrict or amend the application as long as any such amendment will not substantially affect the identity of the mark.

The registered owner of a trade mark registration may at any time during the duration of the registration, in the prescribed manner, request the Registrar to cancel the registration, either partially or totally in respect of the goods or services in respect of which it is registered.

The trademark shall be cancelled upon request by any interested parties if it has not been used for a consecutive period of three years or more.

When the mark has become a generic name the protection shall be cancelled.

Customs protection:

The Directorate of Customs and Excise in the Ministry of Finance is partly responsible for identifying copyright infringing copies at the borders. The Directorate then informs the relevant collective management organizations about any infringement. While the relevant collective management organization pursue the case by identifying the works and rights holders involved, the Customs officials retain the suspected copies, articles and equipments. Once a copyright infringement act has been duly determined by the trained officials of the relevant collective management organization, the Namibian Police is notified of the case and the suspected goods are duly confiscated by the Customs officials and stored in their designated warehouses for safe keeping while the Police investigations continue. The time limit for the Customs and Excise authorities to release the confiscated goods is sixty (60) days, in which the Police should have finalized their investigations and the case should have been heard in court.

If some goods are infringing intellectual property using a protected sign, the sign shall be removed from all infringing goods, in case this operation is impossible, the goods shall be delivered to the claimant.

Sources:

Wipo.int: Industrial Property Act, 2012 (Act No. 1 of 2012)

http://www.unesco.org/culture/pdf/anti-piracy/namibia_cp_en

Vincent Lagier