Malawi's new Trademarks Act No 2 of 2018 ("the New Act") came into operation on 1 October 2018. The New Act introduces protection and registration for, inter alia service marks, collective marks and geographical indications. In addition, it includes an expanded definition of "trademark" to include "non-visual marks" and "serve marks".  "Serve marks" are presumably meant to refer to service marks. This is borne out by Section 7 of the New Act, which states that the application for registration must contain, inter alia, "the goods or services for which registration is related".  This contrasts with Section 8 of the Current Act, which only provides for the registration of a trade mark in relation to goods.

When applying for a trade mark in terms of the Act, unlike in the 1957 Act, a declaration of intention to use will be required at the time of filing the application. We suggest that all new applications be accompanied by a declaration of intention to use, in order to avoid problems when filing an application. The grounds for refusing a trade mark application have also been modified. A trade mark can be refused based on earlier registrations covering similar goods or services, as well as well-known marks, among other things.

For the first time in Malawi, it will be compulsory to classify goods and services for the purposes of registration, in accordance with the Nice Classification as amended from time to time. Trade marks registered under the 1957 Act must, on renewal, be reclassified in accordance with the Nice Classification.

No new regulations setting out the procedure to deal with applications for service marks, collective marks, geographical indications and non-traditional marks have been promulgated yet. Therefore, how these applications will be dealt with, in practice, remains to be seen.  In the interim, the current regulations to the previous Act (Trademarks Act 1957) will continue to apply.

The registration term of a trade mark shall be for a period of 10 years and the trade mark may be renewed after every 10 years, perpetually. The registration date of a mark is deemed to be the date of filing of the application.

The transition provisions of the Act provide that trade marks registered in terms of the 1957 Act shall remain in force until expiry and shall be deemed to have been registered under the new Act.

The Act, in Part IX, makes provision for the registration of marks in Malawi in terms of the Banjul Protocol and Madrid Protocol. Malawi is a signatory to the Banjul Protocol and the specific mention and provision made for the Banjul Protocol in the Act means that the Protocol has now been incorporated into its national law. ARIPO registrations designating Malawi will therefore be valid once the Act comes into operation. While the Act also makes provision for the Madrid Protocol, Malawi is yet to ratify or accede to the agreement. The Protocol therefore remains unenforceable until such time as Malawi ratifies or accedes to the agreement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.