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new legislation as the "new Act" and to the repealed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.
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.