Namibian IP law is changing. A new statute, the Industrial Property Act, 1 of 2012 (the Act), comes into effect on 1 August 2018. The reason for the six-year delay was that until recently, the authorities had failed to publish any supporting regulations, forms and fees. This was put right with the publication of the Industrial Property Regulations (the Regulations) in the Namibian Government Gazette of 1 June 2018.

The Act and the Regulations repeal the Trade Marks in South-West Africa Act, 48 of 1973 and the Patents, Designs, Trade Marks and Copyright Act, Act No. 9 of 1916 (the old law), and the regulations that were passed under these Acts. The changes brought about by the Act and the Regulations affect trade marks, patents, utility models certificates and industrial designs. We highlight some of the most significant changes below:

TRADE MARKS

Mark: The Act has a broad definition of the term ‘mark’. A mark can now be any sign that is capable of being represented visually, and this includes a device, name, signature, word, letter, numeral, figurative element, shape, colour or container for goods, or any combination of such signs. This is a major step forward because under the old law shape and colour were not mentioned. In our view, this non-exhaustive definition may well allow for the protection of a range of non-traditional marks.

Distinctiveness: Under the old law the Register was divided into Parts A and B, with Part A being for distinctive trade marks, and Part B for trade marks capable of becoming registrable in Part A through use. The Act does away with this outdated distinction. In order to be registrable under the Act, a trade mark must at its time of filing, be either inherently distinctive or capable of distinguishing as a result of use.

Multi-class filing: Multi-class applications are now also possible.

Priority: Priority claims are now possible – the old law did not make express provision for Convention priority.

Well-known marks: The Act grants protections to well-known foreign trade marks that are not registered in Namibia, in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property.

Dilution: The Act also introduces protection against dilution of registered trade marks that are well known – the owners of such registrations will be able to prevent the use and registration in Namibia of marks that are identical or similar in relation to any goods or services.

Defensive marks: The defensive mark – a form of protection for well-known marks in relation to goods or services for which there is no intention to use – will no longer exist under the Act. Existing defensive registrations will remain in force.

Collective marks: Certification marks were recognised in the old law and collective marks are now added by the Act. Geographical names or other indications of geographical origin may be registered as certification or collective trade marks.

Joint ownership: The subject of joint ownership is extensively dealt with in the Act. There are specific processes for joint ownership disputes, registration, renewal and infringement proceedings. The old law was silent on the issue of joint ownership.

Non-use: The non-use cancellation period has gone down from five years to three years. A trade mark registration can now be removed from the Register if it has not been used for a continuous period of three years from the date of registration. Any person can bring an application for removal.

Renewal: The grace period allowed for late renewal has changed from one month to six months.

Hypothecation: The act now permits the hypothecation, by a deed of security, of a registered trade mark.

ARIPO: The ARIPO Banjul Protocol on Trade Marks – the designation system whereby trade marks can be registered in a number of African countries through a central filing – came into effect on 6 March 1997. Namibia is a member of the Banjul Protocol. There have, however, long been doubts about the validity of ARIPO trade mark registrations designating Namibia, because Namibia never ‘domesticated’ the Banjul Protocol i.e. it never specifically incorporated the treaty into national law, something that so-called ‘common law countries’ are required to do. These doubts about the validity of ARIPO trade mark registrations in Namibia have been removed by the Act, which specifically recognises rights flowing from ARIPO registrations.

Madrid Protocol: Namibia has been a signatory to the Madrid Agreement and to the Madrid Protocol concerning the International Registration of Trade Marks since 2004. Because Namibia never formally incorporated the Madrid Protocol into national law, there were doubts regarding the validity of international registrations designating Namibia, especially as they were not being examined or advertised for opposition purposes. Until the date the new Act comes into effect, an international registration is therefore not regarded as enforceable. The Act specifically confirms that international registrations designating Namibia are valid. What the Act does not do, however, is deal with the issue of international registrations that were filed before 1 August 2018. Under the Act, Namibian designations in terms of international registrations should be examined in a specific time frame (a normal time frame of 12 months applies, extendable to 18 months upon declaration). Whether Namibia is capable of complying with WIPO’s timelines for the processing of applications within 12 or 18 months, is not certain given the historic backlogs in processing applications in general. We will monitor developments and provide an update in due course.

Industrial Property Tribunal: The Act establishes an Industrial Property Tribunal, which will be responsible for, inter alia, appeals from the Registrar. Significantly, trade mark infringement proceedings must now be brought before the Industrial Property Tribunal. There will be a right of appeal to the Namibian High Court.

Official fees: Official fees have increased significantly.

PATENTS & DESIGNS

Novelty: The Act introduces the requirement of absolute novelty for patents and designs.

Examination: Substantive examination of patent and design applications is introduced.

Disclosure: The Act requires disclosure by applicants in cases where a patent application is derived from or developed with biological resources, or associated indigenous or traditional knowledge.

Term: Patents will now have a 20-year patent term while the term for design registrations remains 15 years, with annual renewal fees payable in both instances. The term and renewal deadlines for patents granted and designs registered under the old Act will remain the same.

International arrangements: The Act recognises Namibia’s obligations in terms of international treaties, including ARIPO, the Patent Cooperation Treaty (PCT) and the Hague Agreement.

Official fees: Official fees have been increased significantly.

Intellectual property owners will no doubt welcome these changes. The changes are part of a widespread and much-needed modernisation of intellectual property law across the continent.

Contact us for more information.