Africa Update

A round-up of news from Africa in July

Mozambique's : IPI Increases Official Fees 

The Mozambique Industrial Property Institute (IPI) responsible for Trade mark and Patent registrations recently announced that they will increase their official fees for the filing and prosecution of Trade Mark and Patent applications. The schedule of new fees was passed on 15 May 2017 and came into force on 15 July 2017.

The new fee schedule is now in line with the IPI code which describes the trade mark system as only allowing for single class filings. Therefore, availability searches and submissions of declarations of intentions to use will now be charged per class.

The new fee schedule also details the cost for renewal of logotypes, trade names and industrial design registrations. It is worth noting that logotypes, trade names and industrial designs whose renewal date falls before 14 July 2017 will be exempt from paying the respective renewal fees provided the renewal applications are filed at IPI before 31 December 2017.

South Sudan : Reservation of Trade Marks

The Republic of South Sudan was established on 9 July 2011, following a referendum approving independence from Sudan. Existing Sudanese trade mark registrations ceased to have effect in the new jurisdiction on that date.

Despite the lack of a trade mark law, the Ministry of Justice in South Sudan began accepting trade mark applications in July 2014 under the provisions of the old Sudanese Trade Marks Act. On 15th May, the Ministry issued written confirmation that all trade mark filings have been suspended until such time as intellectual property laws are enacted.

To ensure that rights holders are not disadvantaged during this period, the Ministry has allowed for rights holders intending to register their trade marks in South Sudan to submit application to reserve their trade marks. Reserving a trade mark will have the effect of giving the trade mark priority over others filed when a law finally enters into force. It is believed that trade marks reserved at the Ministry will be processed as trade mark applications as soon as a trade mark law enters into force. However, it not clear whether any further action or additional fees will be required when the law is enacted.

Kenya : Practice Directions on Renewal of Trade Marks

On 30th June 2017 the Registrar of Trade Marks published Practice Directions on the renewal of trade marks in the Industrial Property Journal -No 2017/06 which effectively does away with the additional 30 day notice period for the renewal of trade marks.

The provisions for the renewal of trade marks are found under Section 23 of the Kenya Trade Marks Act CAP 506 (The Act) and rule 64 to 70 of the Trade Mark Rules(the Rules). The Act provides for renewal of trade marks upon expiry of 10 years from the effective date of registration or from the date of last renewal. The Rules provide that where the renewal fee has not been received on the due date, the Registrar shall publish the removal of the trade mark. Prior to the publication of the notice of removal of the trade mark the registrar must issue a 60 day notice to the registered proprietor of the trade mark. The rules further provide that the Registrar may issue a further 30 day notice to the registered proprietor of the trade mark. It is on the basis of the Registrars discretion that he has decided to unilaterally discontinue issuing the 30 day notices and only issue 60 day notices before the expiry of the registered mark.

The Registrars Practice Directions also addresses renewal notices in the context of provisional refusals based on an existing registration due for renewal. The practice directions state that, where the Examiner of Trade Marks provisionally refuses registration of a later mark on account of the existence of an earlier trade mark  that is due for renewal and whose 60 days notice under Rule 65 had not been duly issued, the Examiner shall ensure that the notice is immediately issued and shall, in the provisional refusal letter notify the applicant of the later trade mark of the actual date of notice for the purposes of determining the date when the 60 day period under Rule 65 expires.

Kenya : Marrakesh Treaty

On 2 June 2017, Kenya deposited its instrument of ratification of the Marrakesh Treaty to facilitate access to published works for persons who are blind, visually impaired or otherwise print disabled. The treaty will enter into force in Kenya on September 2017.

For further information on the above please email Rouse Africa