The long awaited Botswana Industrial Property Act no. 8 of 2010 finally came into force on 31 August 2012 following the publication of “Statutory Instrument No 69 of 2012” citing it’s commencement date. The same Government Gazette also contained the Industrial Property Regulations of 2012.
The revised legislation has resulted in a number of significant changes to trade mark law. We highlight the most significant changes hereunder. For convenience’s sake we shall refer to the new legislation as the “new Act” and to the repealed legislation (the Industrial Property Act, No. 14 of 1996) as the “old Act”.
In terms of the old Act, trade mark proprietors lost their rights if trade mark registrations were not renewed within six months of expiry. Section 88 of the new Act now makes provision for the restoration of lapsed trade mark registrations in that a proprietor may apply within two months, following the six month grace period for the reinstatement of the trade mark. In essence therefor, trade marks can only be restored to the Register within eight months after lapsing.
In line with international trends, the new Act recognises rights in respect of “well-known” trade marks and trade names in section 74. Geographical indications are afforded protection in terms of sections 105-114. Uniquely, the new Act also provides for the protection of traditional knowledge and handicrafts (sections 115 -127).
Although Botswana has been a signatory of the Madrid Protocol for a number of years, the old Act did not make provision for International Registrations under the Madrid Protocol to be extended to Botswana. Accordingly, the validity of all such applications must be questioned. Although the new Act provides for “international applications” to be extended to Botswana, it does not deal with the validity of applications lodged before 31 August 2012. Provisions pertaining to the acceptance and enforcement of applications lodged through ARIPO by virtue of the Banjul Protocol have been repeated.
A significant improvement is that the new Act has collated and listed grounds on which an application may be refused or opposed. The old Act identified six grounds but the new Act set outs additional grounds pertaining to inherently registrability based on, inter alia, the characteristics or nature of a mark. For instance, marks that consists exclusively of a sign or indication which has become customary in current language (i.e. “generic marks”) and signs that consists exclusively of the shape of goods which is necessary to obtain technical result may not be registered. Provision has also been made for the removal of registered trade marks based on the “manner of use”.
Registration of a trade mark confers upon the proprietor the exclusive right to use the mark in relation to the goods or services in respect of which it is registered and the new Act specifies particular acts that constitute infringement and defines acts that equate to “use in the course of trade”. These acts include, amongst others “introducing, selling, offering for sale goods or services with the mark in the market, importing, exporting, storing goods that bear the mark, use of the mark in advertising, use of the mark on the internet of other electronic communication media or networks”, etc.
Potential defences against trade mark infringement have been tabulated in section 82 and “any interested person” as opposed to “any person” in the previous legislation may lodge an application for the invalidation of a registered trade mark on the grounds specified in the new Act.
Provisions pertaining to the need to record licenses have been relaxed substantially. Licenses need not be recorded on the Register before licensees are able to join the proprietor in proceedings or to recover damages. There has been a slight change to the provisions made for appeals and in terms of section 135 (c) of the new Act “any person aggrieved by any decision made under this Act may appeal directly to the High Court against the decision of the Registrar or the Minister”. In so far as geographical indications are concerned, the new Act provides for the continued registration of marks registered in good faith before 31 August 2012 or where a mark has been used in good faith “either before 1 January 2000 or before the geographical indication is protected in Botswana”. In terms of the new Act, such use may not be “interfered” with.
The statutory fees have increased between 25 and 100%. For instance, the application fee has only increased by approximately 25% whereas the registration fee has doubled. Besides the price increase, fees are now payable for requests for extensions of time, restoration fees, etc.
The new Act also deals with “Patents, the Patent Cooperation Treaty, Utility Models, Industrial Designs, International Registrations under the Hague Agreement, Layout designs of integrated circuits, Acts of Unfair Competition and Trade names”.
Whilst the new Act attempts to bring intellectual property legislation in Botswana in line with international trends, it also makes provision for fairly novel concepts such as the protection of traditional knowledge where such knowledge has not been disclosed to the public of if it has been disclosed where such disclosure has not led to commercial or industrial exploitation. The Courts have been afforded wide discretionary powers to award damages to the “local community” should their rights be infringed.
Unfortunately an opportunity has been lost to deal with so-called “Madrid applications” lodged before the new Act came into force. The interpretation of a number of provisions will have to be left to the Courts and the new Act’s practical application will be challenging.