Cape Verde and the Declarations of Intent to Use – 2018 settles its beginning

To provide you an overview on the DIU’s matter, it is important to know that, in practical terms, the DIU is a simple declaration that shall be signed by the applicant or responsible agent and that shall contain the relevant data of the applicant and of the registration at stake (as we will explain further on). In accordance with the national IP law’s article no. 165, Decree-Law 4/2007 of 20th August, this declaration must be filed in respect to trademarks every 5 years, counting from the date of registration. Additionally, the DIU may be filed within a year, starting 6 months before the 5th anniversary of the trademark and ending 6 months after the trademark registration's 5th anniversary.

In addition, it is also important to know that the DIU’s presentation is waived in the year of the trademark's renewal - In Cape Verde trademarks shall be renewed every 10 years, also counting from the registration’s date.

As a practical example let’s consider that trademark “AAAA” was granted on 14/08/2013. In this sense, and in light of the information provided by article no. 165, the DIU shall be filed between 14/02/2018 and 14/02/2019. Concerning the renewal, this maintenance fee is due on 14/08/2023 (10 years from the trademark’s granting date). Following the given example, trademark’s “AAAA” next DIU should be filed between 14/02/2028 and 14/02/2029.

The DIU are intimately related to the trademarks’ serious use matter. In this regard we highlight that, on one hand, a trademark registration gives its titular the exclusive right to use his trademark for the products and services it covers, also giving him the right to hinder others, without his consent, from using confusingly similar marks in commerce. On the other hand, besides having the right to use his trademark, the titular has the obligation to seriously use its trademark for five consecutive years to maintain the registration. A cancellation for non-use can be filed by any interested party and the trademark owner has consequently to prove its use in order to keep the trademark in force.     

Following the reasoning above, if the DIU is not filed, trademarks are unenforceable against third parties and are open to cancellation, which can happen following a request from a third party or if there is a conflict with third party’s rights. In the event trademarks’ owners fail to file the DIU, the trademarks will only be deemed fully valid once again if evidence of use in Cape Verde is filed. The letter of the law is not explicit concerning what kind of documentation would be accepted as “evidence of use”. Notwithstanding, it may be considered acceptable that advertisement, outdoors publicity, invoices proving commercial activity in Cape Verde, among other similar documentation, may be supportive proves of the evidence of use.

Bearing in mind that the PTO has started to grant trademarks relatively recently, namely in 2013 – five years ago -, the first DIU shall be filed in 2018. The fact of being a maintenance service never dealt with before, there existed some flaws that the Cape Verde’s responsible body had to overcome and solve with urgency, in particular the establishment of official fees for DIU, that up to date did not figure in the official schedule of fees, and the necessary information and documentation to proceed with this maintenance action.

As it has been a current habit, we have been following the DIU’s matter closely and have dialogued with the PTO in order to obtain this specific information, that is not predicted in the IP law.

Further analyzing the formal aspects on the DIU’s presentation, we have been given the data that to file a DIU the applicants or responsible agents shall file a form entitled “Declaration of Intention to Use” (Declaração de Intenção de Uso). This form shall include the trademarks' relevant information, namely:

- Applicant's name, nationality and address;

- Trademark’s device, application number, and classes;

- Trademark’s filing and registration date.  

Additionally, and specifically for responsible agents, a notarized Power of Attorney is mandatory. The Power of Attorney is, however, waived in case the responsible agents for the trademarks at stake are already in charge of the registrations, having previously submitted a valid document.

It is crucial to note that the Cape Verde Institute does not advert applicants or agents for the DIU’s presentation. This maintenance service must be dully monitored by the applicants or by the agents themselves.

In the light of the above said, in case applicants have interest in keeping their trademarks in force in Cape Verde, commencing 2018 they are advised to timely proceed with the DIU’s presentation in the Cape Verde’s PTO, respecting the settled formal requirements.