Understanding the nuances of trademark use in various ARIPO jurisdictions

Trademark owners have a monopoly over the use of their registered mark insofar as they can prevent third parties from using equal or similar signs on the market for the same or related products and services. However, in order to benefit from trademark rights, the owner must meet certain requirements, one of which is to use the mark with regard to the products or services for which it was registered.

Requirement of use

The main purpose of the requirement of use is to prevent abusive registrations. The market can be extremely competitive and there are many situations wherein an entity files a trademark solely to prevent a competitor from obtaining the registration, even if it is not within the applicant’s business plan to use the trademark for the products for which it was initially registered.

Further, the requirement of use avoids the so-called ‘trademark graveyard’. It also permits other players in the market to freely claim exclusive rights so that a mark may be properly used.

What is considered non-use?

Trademark laws across the world are largely harmonised thanks to efforts by international and regional organisations, particularly, WIPO, the EUIPO, the African Regional Intellectual Property Organisation (ARIPO) and the African Intellectual Property Organisation.

In light of this, trademark rights:

• confer the registered owner the use of the trademark exactly as it was registered in association to the goods or services for which the trademark is registered;
• entitle the registered owner to obtain relief for infringement, provided that the registered mark has reputation in the relevant jurisdiction;
• prohibit others from using or obtaining the registration of an identical mark; and
• determine that there will be no registration for the same or confusingly similar mark, not only for the same goods or services.

However, there are rules surrounding trademark rights to which a rights holder must adhere, such as use of a mark. It will be considered non-use if:

• the mark is used for products or services that differ from the ones for which the trademark was registered;
• the mark is used with a sign that differs substantially from the one registered (the use of different colours could be considered non-use in some jurisdictions);
• the mark is used in other jurisdictions; or
• the mark is not used in the market.

The Banjul Protocol governs trademark registration in 10 ARIPO member states (at the time of writing): Botswana, eSwatini, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Tanzania, Uganda and Zimbabwe. From 15 August 2020, Mozambique will be included in ARIPO applications.

Section 8 of the Banjul Protocol determines the effects of trademark registration and states that: “The registration of a mark by the Office shall have the same effect in each designated State, with respect to rights conferred by the mark, as if it was filed and registered under the national laws of each such State.”

The Banjul Protocol clearly stipulates that the rights conferred are determined by the national laws of each designated state and for this reason, ARIPO acts solely as a receiving office and all substantive matters with regard to trademarks (eg, the requirement of use) are each state’s responsibility. This means that cancellation based on non-use will follow individual state rules.

Consequences of non-use

Jurisdictions can adopt mechanisms to prevent the non-use of a mark.

For example, legislation under the Banjul Protocol provides the possibility of requesting the cancellation of a trademark based on non-use.

In Botswana, a mark can be subject to cancellation after three years of consecutive non-use, which an interested party may request to the trademark office. Within the same period and before the relevant office, the same legal framework applies in Eswatini, Lesotho, Liberia, Tanzania and Uganda. Meanwhile, Malawi, Namibia, Sao Tome and Principe and Zimbabwe require five years’ consecutive non-use in order to request a cancellation.

As for Mozambique, applicants must submit a declaration of intention of use (DIU) every five years, except on the year of renewal. Only in the situation where a DIU is not filed can a third party challenge the use of a trademark in this jurisdiction.

Despite being a source of revenue for the trademark office, the legal framework of the DIU is extremely challenging for third parties that intend to act against abusive registrations, particularly in situations where the trademark is not being used by the owner. Cape Verde is the only other country in Africa that applies the same legal framework.

This is a co-published article, which was originally published in the World Trademark Review (WTR).