In this note we examine some serious issues with trade mark law in Sierra Leone.
The Trade Marks Act 2014
Trade marks are governed by the Trade Marks Act of 2014 (the act). The act replaced the Trade Marks Cap 244 (the old act). The act has many of the features that one expects in modern trade mark legislation. For example:
- A trade mark is described as something that must be capable of distinguishing, and it includes words, personal names, letters, numerals and figurative elements;
- Anyone claiming to be the proprietor of the trade mark can file an application;
- Priority can be claimed;
- There is reference to the Nice classification and the fact that an application is to be accompanied by a ‘list of goods and services’;
- There is full examination, publication and opposition;
- An application can be refused on the basis of a similar mark for similar goods;
- An application can be refused if it clashes with a well-known mark or a trade name;
- The registration term is 10 years;
- The infringement right extends to similar goods;
- Damages can be awarded for infringement;
- Deliberate infringement is a criminal offence;
- A registration can be cancelled for five years’ non-use.
A few other aspects are worth noting:
- Foreign applicants must be represented;
- There is provision for the registration of collective marks;
- The legislation deals with trade names, unfair competition and false trade descriptions, and it creates many offences;
- The legislations gives specific recognition to international trade mark agreements signed by Sierra Leone – the country has been a member of the Madrid Protocol since 1999;
- The legislation makes provision for an IP Tribunal, which is given considerable powers. We will discuss the IP Tribunal in greater detail later.
There are no rules
Inexplicably, no Rules have been passed under the act. The authorities seem quite relaxed about this, pointing out that section 60 of the act provides that the Rules that were passed under the old act will continue to apply until they are revoked or amended.
But this is very problematic. Not only are the old Rules scant, but they refer to and incorporate the old British classification system (50 classes of goods, no services). So how can these regulations apply to legislation that makes specific reference to services and the Nice classification? The Registrar is still applying the old British classification, which means that no service mark protection is available.
Who is making the decisions?
Under the act the IP Tribunal has considerable powers, in that it is authorised to hear appeals, invalidations, infringements and criminal offences, whereas the Registrar is authorised to hear oppositions and non-use actions. Under the old act the Registrar also had limited powers, with the Supreme Court being charged with issues of distinctiveness, as well as oppositions, rival claims to the same mark, honest concurrent use claims and rectifications.
The IP Tribunal has, however, not yet been established. Section 60 provides that the Supreme Court will exercise the functions of the IP Tribunal until the new body is established. Which is fine, but there are suggestions that the Registrar might be of the view that she is able to exercise the functions of the IP Tribunal in the interim. This is something that will need to be watched carefully.
What we have in Sierra Leone is an extraordinary situation – the act is being applied in terms of issues such as what constitutes a trade mark, registration procedures and registration terms. Yet two of the most important changes contained in the act cannot be implemented – use of the Nice classification system and the registration of service marks. This obviously has serious implications for companies that do business in Sierra Leone, particularly those involved in the services sector. We hope that the authorities in Sierra Leone deal with these issues very shortly.
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