Unlike other forms of intellectual property that are protected for a limited period of time, trade marks can be protected in perpetuity provided the trade marks are renewed*.
In some African territories it is necessary to do more than simply file a renewal application every couple of years. It may also be necessary to file a Declaration of Intention to Use (DIU) or to submit proof of use.
Declaration of Intention to Use (DIU)
In territories like Mozambique and Cape Verde it is necessary to file a DIU every five years from the date of application, except for the year the trade mark renewal is due. A DIU is a statutory requirement where the proprietor files a statement confirming that the trade mark is still in use. Failure to file a DIU, results in the trade mark registration being unenforceable against third parties.
Statement of Use and Proof of Use
For territories like Algeria and Swaziland on the other hand, the renewal application must be supported by a statement of use and/or proof of use of the trade mark a year to three years before the renewal due date.
- Statement of Use is a document signed by the proprietor confirming that the mark has been in use in a specific territory at any time during the three years prior to the date of expiry.
- Proof of Use may be in the form of a copy of an invoice, delivery note or image of the product in-store provided with the address of the store to prove that it is being sold in a specific territory.
Non-use of a trade mark for a continuous period is grounds for removal of the trade mark from the Register. It is therefore important that a record of the use of the trade mark is kept in order for the rights to be protected.
Footnotes
* Please click here http://www.kisch-ip.co.za/trade-mark-registered-africa-now/ for more information on trade mark renewals in Africa.
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