The Mauritian authorities recently published new comprehensive intellectual property legislation, the Industrial Property Act 2019 (the Act). The Act follows a bill published in December 2016 (the Bill). At this stage it is not clear when the Act will come into effect.

The Act follows a bill published by the Mauritian authorities in December 2016 (the Bill).

The Act is very similar to the Bill, although there are a few changes. In 2017 we published a summary of the Bill. We have amended our summary slightly to reflect some minor changes brought about by the Act.

INTRODUCTION

The Act incorporates all the IP rights protected in a single statute. The Act has separate chapters for the various IP rights, as well as the major international treaties governing those rights. There are chapters on the following: patents; utility models; the Patent Cooperation Treaty (PCT); lay-out designs; plant varieties; industrial designs; the Hague Agreement; trade marks; trade names; geographical and the Madrid Protocol. The Act also has chapters dealing with administration and miscellaneous issues.

Some of the more notable features of the various chapters are as follows:

Administration

IP bodies

There will be three different IP bodies, namely:

  • The Industrial Property Office of Mauritius (Office) – this is the registry and it will maintain separate registers for all the rights covered in the Bill;
  • An Intellectual Property Council that will be advisory in nature;
  • An Industrial Property Tribunal that will function as a court and deal with appeals from decisions of the Director and applications for invalidation.

PATENTS

Computer programmes

Whereas the old legislation was silent on computer programmes, the Act makes it clear that computer programmes are excluded from patent protection.

Novelty

The test for novelty is an absolute one.

Ownership

The employer is the owner of patents created by employees in the absence of any contractual provisions.

There are, however, exceptions. One of these states that if the economic gains made by the employer are ‘disproportionately high as compared to the employee’s salary and the reasonable expectations of gain that the employer had from the employee’s inventive output at the time he hired him‘ the employee is entitled to ‘appropriate compensation’.

Examination

The Bill envisages substantive examination in the sense that the applicant can be required to submit particulars of corresponding foreign applications, including search results and final decisions.

Opposition

Whereas the old law did not make provision for opposition, the Act does.

Duration

The duration is 20 years with annual maintenance fees.

Rights

Amongst the limitations of the rights enjoyed by the patentee is one that relates to ‘extemporaneous preparation in a pharmacy as regards medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner.‘

Compulsory licensing

There are extensive provisions relating to compulsory licensing. An application for a compulsory licence based on insufficient availability of the product cannot be made before the expiry of a period of four years from the filing date of the patent, or three from the grant date.

Invalidation

There is provision for invalidation by the Tribunal and an invalidated patent is considered null and void ab initio.

PCT

There are specific provisions relating to PCT – these deal with, inter alia, international applications designating Mauritius, national phase, reinstatement of rights after failure to enter national phase, and processing.

UTILITY MODELS

Novelty

The test for novelty is an absolute one.

Examination

The Bill envisages substantive examination.

Duration

The duration of a registration is six years from the filing date, and this can be renewed for two further periods of two years.

Conversion

There is provision for conversion from a patent application to an application for a utility model certificate, and vice versa.

Opposition/ invalidation

There is no opposition but there is provision for invalidation.

LAY-OUT DESIGNS

Requirements

The requirements for registration are as follows:

  • The lay-out design must be original, in other words the result of the creator’s own intellectual effort and not commonplace;
  • The lay-out design must not have been commercially exploited, or alternatively it must not have been commercially exploited for more than two years.

In the case of a lay-out design consisting of a combination of elements and interconnections that are commonplace, it can only be protected if the combination taken as a whole is original.

Examination

The Bill envisages substantive examination.

Duration

The registration will lapse at the end of 10 years from the date on which the application is filed in Mauritius in cases where it has not been commercially exploited anywhere in the world, or 10 years from the date of first commercial exploitation anywhere in the world, whichever expires earlier.

Invalidation

There is provision for invalidation of a registration.

Exploitation by a government agency or third party

There is provision for the authorities to authorise a government agency or third party to exploit a layout design in the national interest where the exploitation by the right holder is anti-competitive.

NEW PLANT VARIETIES

National treatment

National treatment is granted to nationals of, and companies registered in, members of the International Convention for the Protection of Plants (UPOV).

Requirements

The requirements for registration are that the variety must be new, distinct, uniform and stable.

Priority

There is a 12-month priority right from applications filed in UPOV member states.

Examination

There is formal examination, and the Office can do further substantive examination and enter into agreements with other authorities outside of Mauritius for the purposes of examination.

Rights granted

The rights granted cover production or multiplication, conditioning for the purposes of propagation, offering for sale, selling or other marketing, exporting, importing, and stocking for any of these purposes.

Duration

The duration of the registration is 25 years from the date of filing, with annual fees being payable.

Denomination

There are detailed provisions regarding the denomination of the variety.

Invalidation

There is provision for invalidation of the grant of a breeder’s right.

INDUSTRIAL DESIGNS

Novelty

An industrial design must be new and original in order to be registrable and the novelty test is an absolute one.

Functionality

A design is unregistrable if its ‘features are solely dictated by technical or functional considerations.’

Examination

There is provision for examination.

Duration

The duration of the registration is five years from the filing date, and this can be renewed for three further five-year periods.

Opposition/ invalidation

There is no provision for opposition but there is provision for invalidation.

Limitations

Whereas the old law did not create any limitations or exceptions to the rights conferred by a registration, the Act does. So, for example, the rights do not extend to acts done for non-commercial or experimental purposes, teaching, education and research.

Hague Agreement

There are provisions relating to the procedural issues regarding international designs under the Hague Agreement.

TRADE MARKS

Definition

A mark is defined as a ‘visually perceptible sign or combination of signs‘ and it includes a ‘combination of colours’ and the shape of the goods. The definition seems to exclude the possibility of registering odours or tastes.

Examination

There will be substantive examination including examination for prior rights. The term for responding to objections will be six months.

Honest concurrent use

The Act makes provision for acceptance of an application on the basis of honest concurrent use with an earlier mark.

Divisional applications

There is provision for the division of an application into two or more applications.

Well-known marks

There is protection for well-known marks, although it is unclear whether this refers to ‘well-known marks’ as referred to in Article 6bis of the Paris Convention.

Opposition

There is scope for opposition, culminating in a hearing. The Act makes provision for an opposition on the basis of prior use of an unregistered mark.

Duration

The duration of a registration is 10 years, renewable indefinitely for further 10-year periods. Where a renewal fee is not paid within the prescribed period a six month extension can be granted (there will be a surcharge). A registration that has lapsed can be restored within one year of the lapse.

Invalidation

There is provision for invalidation.

Non-use

There is provision for removal of a registration for non-use for a consecutive period of three years or more.

Collective and certification marks

There is provision for registration of collective marks and certification marks.

Madrid Protocol

There are detailed provisions on the Madrid Protocol, both as regards the filing of international application by Mauritians, and international registrations that designate Mauritius. In the event of a conflict between the provisions of the Act and the Madrid Protocol, the Madrid Protocol takes precedence.

The provisions dealing with international registrations designating Mauritius deal with a host of issues including: refusal by the local office; the statement of grant of protection; a final decision following a provisional refusal; the effect of an international registration; invalidation; replacement of national registrations; the transformation of a cancelled international registration into a national registration.

Given that there does seem to be considerable uncertainty about how international trade mark registrations work in certain African countries that have signed up to the Madrid Protocol, this detailed treatment of the topic is very welcome.

TRADE NAMES

Requirements

Trade names may not deceive as to the nature of the enterprise.

Infringement

Whether registered or not, trade names are protected against ‘an unlawful act committed by a third party’. This will include the subsequent use of the name by a third party as a trade name or a mark, or any use of a similar name or mark that is likely to mislead the public.

GEOGRAPHICAL INDICATIONS

Who can file?

There is provision for registering geographical indications. This can be done by a grouping of producers or a competent authority on behalf of such a grouping.

Content of application

The application must specify the following: the name of the applicant; the geographical indication; the geographical area; the goods; the specific characteristics of the goods; the area and method of production of the goods; the link between the characteristics and the area and method of production; the manner in which the characteristics are controlled.

Examination

The Bill envisages substantive examination.

Opposition

There is provision for opposition.

Duration

The duration of a registration is 10 years, renewable indefinitely for further periods of 10 years.

Effect of registration

The effect of registration is that no person other than a producer carrying on an activity in the relevant geographical area will have the right to use the geographical indication in the course of trade in respect of the goods specified.

Invalidation

There is provision for invalidation.

MISCELLANEOUS

There are provisions relating to, inter alia, the recordal of a change in ownership of any of the rights, the recordal of a licence, appeals to the Supreme Court, and IP-related criminal offences.

One provision worth highlighting is the one that provides that the owner or exclusive licensee of any IP right is barred from instituting infringement proceedings if a period of five years or longer has elapsed since they became aware of the infringement.

CONCLUSION

Mauritius has followed the example of other African countries by consolidating and clarifying its IP legislation. We think this augurs well for IP in Africa.