Lesotho Now Requires Applicants Using the Madrid System to File Applications in Lesotho, to Also File Declarations of Intention to Use Locally

Lesotho has notified the World Intellectual Property Organisation (WIPO) that it requires a Declaration of Intention to Use when Lesotho is designated in an International Application or subsequently designated in an International Registration (IR) in terms of the Madrid Protocol Concerning the International Registration of Marks (the Madrid Protocol). This is despite the fact that such declarations are not required when national applications are filed.

Lesotho acceded to the Madrid Protocol on 12 November 1998 with it entering into force in Lesotho on 12 February 1999, but Lesotho has not yet domesticated the provisions of the Madrid Protocol. Lesotho is a common law country, which means that international treaties must be domesticated before they are enforceable in Lesotho.

What could possibly save IRs designating Lesotho, is a general provision in its trade mark legislation that stipulates that the provisions of any international treaty in respect of industrial property to which Lesotho is a party shall apply to matters dealt with by the relevant act and, in case of conflict with the provisions of that act, the provisions of the international treaty shall prevail.

Despite this general clause, the enforceability of IRs in Lesotho is not clear and there are no regulations in place to regulate how applications for IRs are dealt with by the Trade Marks Office. However, the Trade Marks Office insists that IRs are enforceable in Lesotho, as they are treated within the framework of the existing national laws. The Trade Marks Office is busy consolidating applications filed through WIPO, ARIPO and nationally into a single database. Although the process is in the early stages, the Trade Marks Office has started to refuse national applications based on earlier filed IRs.

This notification further serves as confirmation that the Lesotho Trade Marks Office considers IRs to be equal to national applications, as long as the owner has the intention to use the mark in Lesotho.

For more information on protecting your intellectual property in Lesotho please contact Rouse Africa.