The New Industrial Property Act in Namibia: what has changed?
The new Industrial Property Regulations were finally published in the Namibian Government Gazette on the 1st day of June, 2018 and the law came into effect two months after, on the 1st of August.
The Act means to repeal the Trade Marks in South West Africa Act, dated 1973, introducing new provisions for trademarks, patents and industrial designs.
The new legal frame has been long anticipated and concerns several changes in what relates Industrial Property.
With respect to Patents, several changes were made in the new legislature. The Industrial Property Act recognizes Namibia’s obligations in terms of international treaties, such as the Patent Cooperation Treaty (PCT), ARIPO, the MADRID Agreement and the Hague Agreement.
Furthermore, a 20 year patent term is finally provisioned. Note that annual maintenance fees are payable.
Lastly, in what patents are concerned, the new framework introduces absolute novelty as well as substantive examination for all patent applications.
Conversely, one of the most significant changes is the inclusion of new requirements for trademark applications, assignments, renewals and restorations, alterations/amendments, joint ownership licence contracts and registered users. Official fees, which are payed to the Business and Intellectual Property Authority (BIPA) were also increased.
Namibia is now a multiclass application system, whereas in the previous legislative frame it was a single class jurisdiction, which meant that an application had to be filed for each trademark class identified.
Additionally, it is now possible to file applications in terms of the Madrid Protocol and the Banjul Agreement. Note, nonetheless, that however recognising Namibia’s obligations before the international protocols, it is not clear how said applications will be dealt with in practice by the BIPA. Notwithstanding, this is a huge step as to ensure the compatibility between national and international laws.
It should be noted though, to avoid unnecessary obstacles, we are still advising brand owners to elect the national application alternative to better secure protection for their assets, for it is still to be proven that the Namibian Trademark’s Institute will be capable of examining the newly filed trademark applications within the limited deadline set by WIPO of 12 to 18 months.
Despite all the important changes, still no provision was made for defensive trademark registrations, although pre-existing registrations will remain valid. Moreover, collective marks can now be registered in Namibia, as opposed to the previous solution, which only provisioned for certification marks.
In another hand, the legal frame makes provision for well-known marks, crucial to ensure the protection of big international brands that are yet to enter the Namibian market.
With respect to advertisement, trademarks will now be published by BIPA, in terms of the new Industrial Property Act, in the IP Bulletin after payment of a prescribed fee. Note that previous to the new law, marks were published in the Gazette.
As for validity, trademarks in Namibia are effective for an initial period of ten years after which they can be renewed for equal amounts of time. Cancellation based of non-use of a trademark may occur after a three years period.
The Industrial Property Tribunal is now responsible for every trademark infringement proceeding as well as hearing appeals from the Registrar. It will also be possible to appeal from the Tribunal to the Namibian High Court, ensuring justice and fair ruling.
Although some of the practical aspects of the new law are still to be clarified, the framework represents a major turn into the modernization of Intellectual Property matters in Namibia.