Botswana is a stable democracy with an excellent track record of governance and has topped the list of the world's fastest growing economies since attaining independence in 1966. There is a well-developed legal system based on common law and purpose written legislation which facilitates commercial activities.

Intellectual Property law is advanced in Botswana and brand owners' rights are enforced effectively.

Botswana acceded to the Madrid Protocol in 2006. The Industrial Property Act No.8 of 2010 ("the IP Act") that came into force on 1 September 2012, has been enacted to provide protection for trade marks designated under the International Registration ("IR") system. The IP Act makes provision for the protection of industrial property in Botswana, giving effect to various international conventions, treaties and protocols to which Botswana is a signatory.

With a single application in one currency and one language at their national trade marks office, Botswana trade mark owners may now secure trade mark protection in other Madrid Protocol member countries. Foreign trade mark owners will also be able to designate Botswana when lodging International trade mark applications under the Madrid Protocol ("ITMR's").

We briefly set out below, information and comments pertaining to the procedures to be followed when lodging an application for ITMR's or designating Botswana in terms of the IP Act.

Subject Matter

Question

Answer

Method

How are notices received from WIPO?

Via mail

Trade Mark Office records

On receipt of a notification of an ITMR from WIPO, how does your Trade Mark Office record it?

(i) Simply store the notice?   Yes

(ii) Entry in a register?           No

Search

When a trade mark availability search is conducted, is it normal to check ITMRs, locally recorded as above?

According to the Botswana Registry, since August 2012 all the Trade mark applications that have designated Botswana have been uploaded into the Industrial Property Automated system (IPAS). All the notifications are uploaded on a weekly basis. Therefore, as at August 2012, all trade mark availability search results will also include the ITMRs.

Trade Mark Office procedure

a) Does the Office examine ITMRs on the same basis as national trade mark applications

Yes, according to the Registry, the intention is to examine ITMRs on the same basis as national trade mark applications. No examinations have been conducted as yet.

b) Does the Office advertise ITMRs for opposition?

Yes

c)If answer to (a) &/or (b) is "yes", does the procedure get completed within the 12-18 month period required by the Madrid Protocol?

Procedure is not completed within 12-18 month period. Since there have been no examinations as yet, applications where the 18 months have lapsed are considered automatically registered.

Any other comments on Office processing of ITMRs?

According to the Botswana Registry, as a result of capacity constraints at the Registry, examinations of Madrid applications have yet to take place. However, the intention is to publish all the marks where the 18 month period has expired, starting March 2013. This will give opportunities for invalidation by owners of conflicting trade marks.

Interaction of ITMRs with national applications

a) Does the Office cite potentially conflicting ITMRs against national trade mark applications?

This will only be implemented once the Registry starts examining the ITMRs. The expected time has not been confirmed as yet.

b) Has the validity of any such citation been questioned in the course of the trade mark application affected?

None so far

Cases

Have there been any cases in Court or before the Registrar, considering the validity of ITMRs on national territory?

None so far

Presentations, Debates

Have there been gatherings of officials, practitioners and/or other parties interested in ITMRs to explain or discuss these issues?

None so far

REGISTER SUMMARY

Recordal of International (Madrid) trade mark registrations (ITMRs) in national Trade Mark Office

Question

What details of an ITMR are specifically recorded by national Trade Mark Office not just by retaining copies of WIPO notifications?

Answer

 

Name of the mark

YES

Representation of the mark

YES

International Registration Number

YES

Separate local number

NO

Date of filing at WIPO

YES

Date of WIPO Gazette

NO

Date of registration at WIPO

NO

Date of notification to national Office

YES

Details of owner

YES

Details of agent

YES

Class/es

YES

List of goods/services

YES

Other designated countries

NO

Details of basic (original national) registration

NO

Other information (please describe)

Priority information and Vienna Classification

Question

When a search of ITMRs at the national Trade Mark Office is conducted, which of the following features can be used to start the search?

Answer

 

 

WIPO number

 

YES

TEXT of mark

First word or text

YES

Initial numerals

YES

Word or text inside the mark

YES

Numerals inside the mark

NO

Image of the mark (Vienna classification of "figurative elements")

 

YES

Proprietor's name

 

YES

We would like to express our appreciation to Mr Timothy Leatile Moalusi, Chief Commercial Officer (IP) Registrar of Companies and Intellectual Property of Botswana for his kind co-operation in assisting us to in the preparation of this commentary.

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.