眾律國際法律事務所

Introduction:

Language: English

Capital: Lilongwe

Area: 118,484 km2

Population: 16,407,000 (2013)

Currency: Kwacha (MWK)

Religion: Christian (68%), Muslim (25%)

Geographical situation: in southeast Africa, it is bordered by Zambia to the northwest, Tanzania to the northeast, and Mozambique on the east, south and west.

International treaty membership:

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (October 24, 1995)

Convention Establishing the World Intellectual Property Organization (June 11, 1970)

Paris Convention for the Protection of Industrial Property (July 6, 1964)

Legislation:        

Trade Marks Act, Chapter 49:01

Government Institutions:

Department of the Registrar General, Ministry of Justice and Constitutional Affairs

Type of trademark:

The law does not give any description of what type of sign could be registrable. Only distinctiveness is quoted, and some specific ground for refusal.

Ground for refusal :

The Registrar may refuse to accept any application for the registration of a Registrable marks. trade mark upon which any of the following appear:­

(a) the words “Patent”, “Patented”, “Registered”, “Registered Design”, Copyright”, “Entered as Stationers’ Hall, “To counterfeit this is a forgery”, or words to like effect; (b) representations of the President or any colourable imitations thereof:

(c) The words “Red Cross” or “Geneva Cross”, and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white or a red ground or silver on a red ground, or such representations in a similar colour or colours.

The word “Anzac” may not appear on trade mark for whose registration an application is made.

Where a representation of the armorial bearings, insignia, orders of chivalry, decorations or flags of any state, city, borough, town, place, society, body corporate, institution or person appears on a mark, the Registrar, before proceeding to register the mark, shall, if he so requires, be furnished with a consent to the registration and use of such emblems form such official or other person as appears to the Registrar to be entitled to give consent, and in default of such consent he may refuse to register the mark.

Application content:

In order for a trade mark (other than a certification trade mark) to be registrable in the register, it must contain or consist of at least one of the following essential particular:- Distinctiveness requisite for registration

(a) the name of a company, individual or firm, represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business;

(c) an invented word

(d) a word or words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname;

(e) any other distinctive mark, but a name, signature or word or words.

Application process:

Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause a search to be made amongst the registered marks and pending applications, for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark applied for, or so nearly resembling it as to render the mark applied for likely to deceive or cause confusion, and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.

After such search, and consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may furnish or may be required to furnish, the Registrar may accept the application absolutely, or he may object to it, or he may express his willingness to accept it subject to such conditions, amendments, disclaimer, modifications or limitations as he may think right to impose.

If the application is accepted it shall be published and the Office will issue a certificate of registration.

Refusal:

If the Registrar object to the application, he shall inform the applicant of his objections in writing, and unless within two months the applicant applies for a hearing or makes a considered reply in writing to those objections he shall deemed to have withdrawn his application.

If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate such willingness to the applicant in writing, and if the applicant objects to such conditions, amendments, disclaimer, modifications or limitations, he shall within two months from the date of the communication apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application. If the applicant does not object to such conditions, amendments, disclaimer, modifications or limitations, he shall forthwith notify the Registrar in writing and alter his application accordingly.

Rights of exploitation and related delay:

The ownership of a mark give to the owner the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered.

Any person may within two months from the date of any advertisement in the Gazette of an application for registration of a trade mark give notice to the Registrar of opposition to the registration.

The notice shall include a statement of the ground upon which the opponent objects to the registration. If registration is opposed on the ground that the mark resembles marks already on the register, the numbers of such trade marks and the dates of the Gazettes in which they have been advertised shall be set out. The note shall be accompanied by a duplicate which the Registrar with forthwith send to the applicant.

Upon receipt if the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent and within two months from the receipt of the duplicate the opponent shall leave with the Registrar such evidence by way of affidavit or solemn declaration as he may desire to adduce in support of his opposition and shall deliver to the applicant a copy of such evidence.

The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time. The Registrar shall, on application made by the registered proprietor of a trade mark renew the registration of the trade mark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registration.

Transfer and conditions:

A registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not.

When the Registrar is satisfied as to the title of the person claiming to be registered he shall cause him to be registered as proprietor of the trade mark in respect of the relevant goods, and shall enter in the register his name, trade or business address and description and particulars of the assignment or transmission.

Certification:

On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Patent Office.

Withdrawal and cancellation:

Nothing about cancellation in the law.

Customs protection:

The law is silent about border measure, a report from UNESCO confirms that.

Sources:

Wipo.int: Trade Marks Act, Chapter 49:01.

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

Vincent Lagier