Angola – Key facts on the maintenance of IP assets

Ended the initial phase of the registration process of the industrial property assets, that is to say, the filing of the applications in I.A.P.I. (Angolan Institute of Industrial Property) and subsequent phases (bulletin publication, opposition period, formal and substantial examination, granting fees payment and granting of the rights), holders shall be aware of the necessity to proceed with the payment of the maintenance fees of their rights.

Thereafter, we will expose fundamental facts on the maintenance of the most prominent legal regimes of industrial property in Angola, namely: trademarks, patents, utility models, industrial designs and industrial models.

Trademarks

According to article no. 31 of the Angolan industrial property law, a trademark may be composed by “signs or a set of signs that are visual, nominative, figurative or problematic, that make it possible to distinguish the products or services of an enterprise from other identical or similar ones”.

This distinctive commercial sign, in the light of article no. 38, has a duration of 10 years, counting from the application’s filing date, and may be renewed for consecutive periods of 10 years, by means of payment of the respective maintenance fees. In this sense, we verify that trademarks may be renewed until the holder has intention to keep his right, eventually ad aeternum.

However, in the event the holder has not settled the payment of the maintenance fees during the regular period, a period of 4 months is granted to proceed with the late renewal of his trademarks, being, by contrast, applied a surcharge.

Additionally, in case the holder has not settled the payment of the maintenance fees during the surcharge period, he may still require the revival of his trademark, what should be done within 1 year after the term of its duration and by means of payment of the fees due. Notwithstanding, we highlight that the revival shall only be accepted by I.A.P.I. in case the holder proves the fair cause that hindered him from presenting the renewal request within the legally required period.

In case the fees are regularized, I.A.P.I. will proceed with the publication of the renewal in the Industrial Property Bulletin and, afterwards, with the issuance of the renewal certificate.

Taking the above-mentioned information into account, let us look, as a practical example, at trademark “AAAA”, with filing date of 19/08/2012.

• Renewal deadline – 19/08/2022
• Renewal with surcharge deadline – 19/12/2022
• Revival deadline – 19/08/2023

In the event the holder does not settle the renewal fees of his right within the deadlines given above, the trademark will lapse. In this case, the holder will not have other option but to proceed with a new filing of application, without prejudice to the rights of bona fide third parties that have filed a similar application during the period of its caducity.

Still in the context of trademarks’ caducity, one should underline that these expire in case of non-use during a period of 2 consecutive years, except in cases of force majeure and duly justified.

Hence, before being vigilant for the timely payment of their trademarks’ renewal fees, holders shall focus on the urge to make a genuine use of the assets during a period of 2 consecutive years, in order to keep their registrations valid.

In relation to the formal requirements to renew a trademark, in case the file is not held by the holder himself or by an authorized representative, a notarized power of attorney will be required. Shall the applicant be foreigner, the power of attorney shall be legalized in an Angolan consulate.

Patents and Utility Models

Pursuant to article no. 2 of the Angolan industrial property law, “patent” shall mean the “legal right granted to protect an invention and which confers its owner the exclusive right to exploit it”. Being “invention” characterized by “an inventor’s idea which makes it possible in practice to solve a particular technological problem, in relation either to a product or to a process”.

It is worth mentioning that not all inventions are subject to protection by patent. To be patented, an invention must be new, (i.e. shall not form part of the state of the art), involve an inventive step (i.e. shall not result in an evident manner of the state of the art by an expert in the specialty), and, finally, be deemed susceptible of industrial application (i.e. its object must be made or used in any kind of industry or in agriculture).

The “utility model”, according to the current law, is understood as “any new arrangement or form obtained in or introduced into objects such as tools, work implements or utensils that improve or increase the conditions for using them, and their usefulness, shall be regarded as a utility model.” The protection shall be granted exclusively to the particular new form that makes it possible to increase and improve the usefulness and utilization of the objects for which it is intended. This is a legal regime close to the patent, having, however, less demanding granting requirements concerning the inventive step.

Unlike trademarks, that may be renewed ad aeternum, patents and utility models have a limited duration, since their holders hold the exploitation monopoly for 15 years only, after its respective filing date. After this period, these fall into the public domain, being freely exploited.

Concerning the maintenance fees, annual fees are due, which deadline has the filing of application as reference date. In case the holder fails to settle the annuities within the regular period, he is still given a period of 6 months to proceed with the payment, being applied a surcharge.

Contrary to what we observe on trademark matters, I.A.P.I. does not issue any certificate of renewal for patents, being simply issued an official receipt, proving the payment of the fees.

It is curious to note that, in contrast to the majority of the jurisdictions, where the protection is granted for 20 years, in Angola the protection is only valid for 15 years.

Taking the above-mentioned information into consideration, let us look, as a practical example, at patent no. “1111”, with filing date of 21/09/2016.

• (1st and 2nd annuities paid with the filing)
• 3rd annuity payment deadline – 21/09/2018
• 3rd annuity payment with surcharge deadline – 21/03/2019
• Expiry date – 21/09/2031

In the event the holder does not settle the renewal fees of his right within the deadlines above, this will lapse, falling, consequently, into public domain. It shall be noted that patents lapse in the event the holder does not start exploiting his invention in the country effectively and regularly within 4 years after the patent’s granting, or in the event its exploitation has been interrupted for more than two years, except in cases of force majeure.

In relation to the formal requirements to renew patents and utility models, the presentation of a power of attorney is waived, being, however, necessary to present some data indispensable to the identification of the right and of its holder.

Industrial Designs and Industrial Models

As stated in article no. 16 of the Angolan industrial property law, an “industrial model” consists in “any plastic form whether or not it is associated with a line or colors that may be used as a type in the manufacture of an industrial or handcrafted product”. By contrast, “industrial design” involves “any new arrangement or set of lines or colors that may be applied for an industrial or commercial purpose, in the ornamentation of a product by some manual, mechanical or chemical process, whether simple or combined”. It is important to note that only enjoy protection industrial models and industrial designs that are new and, even composed by known elements, produce original combinations that provide their respective subject an overall appearance with particular characteristics.

Industrial designs and industrial models have, in accordance with article no. 21, a duration of 5 years from the application filing date and may be renewed by 2 consecutive periods of 5 years, against payment of the stipulated fees – which makes a validity period of 15 years.

Although the law mentions that the maintenance fees are due every 5 years, it is curious to note that, in practice, I.A.P.I. requires the payment of said fees annually. If the holder fails to settle the annuities within the regular period, he is still given a period of 6 months to proceed with the payment, being applied a surcharge.

As shown in patents and utility models, I.A.P.I. does not issue any certificate of renewal for industrial designs and industrial models, but an official receipt, proving the payment of the fees.

Taking the above information into consideration, let us look, as a practical example, at design no. “BBBB”, with filing date of 20/08/2012.

• (1st annuity paid with the filing)
• 2nd annuity payment deadline – 20/08/2013
• 2nd annuity payment with surcharge deadline – 20/02/2014
• Expiry date – 20/08/2027

If the holder does not regularize the renewal fees of his rights within the deadlines designated, these will lapse. Still in the context of caducity, one should underline that, as per article no. 28, industrial designs and industrial models will lapse in case of failure to exploit for one year in Angolan territory.

With regards to the formal requirements to proceed with the renewal of these rights, although the submission of a power of attorney is waived, the presentation of data indispensable to the identification of the right and of its holder is compulsory.

To conclude, ended the initial phases of the registration process of their IP rights, holders must be vigilant in what concerns the maintenance of such rights, concern that shall also pass through the timely payment of the required fees and through an effective exploitation of these rights in Angolan territory.