Under the old, 1996 Act, trade mark proprietors lost their rights if registrations were not renewed within six months of expiry. Section 88 of the new Act now makes provision for an application to restore lapsed trade mark registrations within the two months following the six-month grace period.
In line with international trends, the new Act recognises rights of well-known trade marks and trade names in section 74. It provides for the continued registration of geographical indications registered in good faith before August 31 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".
While the old Act did not make provision for international registrations under the Madrid Protocol to be extended to Botswana. The new Act corrects this, but an opportunity has been lost to deal with the validity of applications lodged before August 31 2012.
A significant improvement is that the new Act collates and lists grounds on which an application may be refused or opposed. It sets out grounds in addition to the six grounds originally specified in the old Act. These additional grounds pertain to inherent registrability. Provision has also been made for the removal of registered trade marks based on the "manner of use".
The new Act furthermore specifies particular acts that constitute infringement and defines acts that equate to "use in the course of trade". 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 now lodge an application for the invalidation of a registered trade mark.
Licences need not be recorded on the register before licensees are able to join the proprietor in proceedings or to recover damages.
Besides the price increase of between 25% and 100%, fees are now payable for requests for extensions of time, restoration fees and other points.
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 IP legislation in Botswana in line with international trends, it also makes provision for fairly novel concepts such as the protection of traditional knowledge not disclosed to the public, or not commercially or industrially exploited. The Courts have been afforded wide discretionary powers to award damages to the "local community" should their rights be infringed.
Regrettably, the interpretation of a number of provisions has been left to the Courts and the new Act's practical application will be challenging.
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Runaaz Dawood |
Spoor & Fisher Jersey
Africa House, Castle Street
St Helier, Jersey JE4 9TW
Channel Islands
Tel: +44 1534 838000
Fax: +44 1534 838001
