…Key insights to policy regulations as they become effective
By Hilary Mare
OVER the last months, the transformation of the Intellectual Property agenda in Namibia and on the continent has made it possible for Namibia to give birth to new Industrial property legislation, a critical piece of law that falls part of the wider body of law known as intellectual property (IP) which refers broadly to the creations of the human mind.
In essence, the publishing of Government Gazette No. 6616 of 01 June 2018, announced the coming into force of two pertinent documents regarding intellectual property as from 01 August 2018.
One being the Industrial Property Act, 2012 (Act No. 1 of 2012) hereinafter referred to the IP Act and the Regulations under the Industrial Property Act. As per the gazette, the Industrial Property Regulations would repeal Government Notice No. R2498 of 14 December 1973, as corrected by Government Notice No. R87 of 18 January 1974, and amended by Government Notice No. AG 40 of 15 July 1989 and Government Notice No. 13 of 5 January 2001.
The IP Act repeals legislations pertaining to patents, trademarks, designs, namely, the Trade Marks Act, Act No. 48 of 1973, The Patents and Designs Act, Act No. 9 of 1916, the Patents and the Designs and the Trademarks and Copyright Proclamation Act, Act No. 17 of 1923. The IP Act does however not cover any subject matter related to copyright. Copyright remains covered under the Copyright and Neighbouring Rights Protection Act, Act No. 6 of 1994.
According to Adams & Adams, an internationally recognised and leading African law firm that specialises in providing intellectual property and commercial services, in so far as trademarks are concerned, some of the noteworthy introductions include new requirements for assignments and provisions relating to restorations, alterations/amendments, joint ownership, licence contracts and registered users.
“No provision is made in the new Act for defensive trade mark registrations, although existing registrations will remain valid. The Act also makes it possible to register collective marks, whereas previously only certification marks were registrable. Another important change is that the non-use cancellation period has been shortened from 5 years to 3 years,” said the firm.
Arguably the most significant change is that trade mark infringement proceedings must now be brought before the newly-established Industrial Property Tribunal. The Tribunal will also be responsible for appeals from the Registrar. Appeals from the Tribunal to the Namibian High Court are possible.
Recognition has been afforded in the new Act to foreign well-known trade marks in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property.
Provisions are also now in place relating to multi-class applications and applications filed in terms of the Madrid Protocol and the Banjul Agreement. However, it remains to be seen how such applications will be dealt with practically by the trade marks registry.
It is worth noting that Industrial property takes a range of forms, these include patents for inventions, industrial designs (aesthetic creations related to the appearance of industrial products), trademarks, service marks, layout-designs of integrated circuits, commercial names and designations, geographical indications and protection against unfair competition. In some cases, aspects of an intellectual creation, although present, are less clearly defined. What counts then is that the object of industrial property consists of signs conveying information, in particular to consumers, regarding products and services offered on the market. Protection is directed against unauthorized use of such signs that could mislead consumers, and against misleading practices in general.
“Until such time as the Namibian Registry is capable of examining newly filed trade mark applications within WIPO’s strict 12-18 month timelines for international (Madrid Protocol) registrations, it is highly recommended for brand owners to continue to secure national registrations for their valuable trade marks in order to avoid possible enforcement difficulties from arising. We are monitoring this situation closely, but given the Registry’s present backlogs and examination timelines, it is unlikely that the Madrid system would become a viable solution for brand owners to reliably secure statutory protection for their trade marks in Namibia any time soon,” added Adams & Adams.
As far as Patents is concerned, the New Act is a drastic improvement on the very out dated 1923 Proclamation. It recognises Namibia’s obligations in terms of several international treaties including the Patent Co-Operation Treaty (PCT), ARIPO, Madrid Agreement and the Hague Agreement.
The Act introduces absolute novelty and substantive examination for all patent applications. In a d d i t i o n , in a move that mirrors steps taken to p r o t e c t and recognise the value of indigenous biological resources in other countries, the Act requires applicants to disclose details of this in the application if the subject matter of a patent application is derived from or developed with biological resources or associated indigenous or traditional knowledge.
“Finally, the Act introduces a 20 year patent term and significant increases to the official fees for all IP matters.”
In affirmation, Ainna Kaundu, BIPA’s IP Executive noted that the IP Act consolidates the same laws on Trade Marks, Patents and Industrial design, saying that, “there are a number of changes under this new law that affects every Namibian in some way or the other. The most significant changes relate to the introduction of Utility Model protection, increase of application fees, the term protection for patents and the annual renewal requirements.”
Through multi-stakeholder consultative meetings, experts in the field of Intellectual Property has hailed this legislation as one of the best in Africa, particularly due to the fact that this Act reflects a model IP legal framework for developing countries, as well as that it encompasses a built-in mechanism that speaks to inclusive participation for all citizens. Namibia being a member of both the World Intellectual Property Organisation (WIPO) and the African Regional Intellectual Property Organisation (ARIPO) is signatory to a number of regional and international treaties and instruments, which under the new Act relate directly to the level of compliance to these instruments. They include the Banjul Protocol on Trade Marks, Harare Protocol on Patents, Madrid Agreement concerning international registration of marks, the Patent Cooperation Treaty, Hague Agreement, Paris Convention and the TRIPS agreement falling under the World Trade Organisation.
“We are in the process of conducting various stakeholder engagement sessions and public education campaigns that will inform Namibians about the new act, the changes within the act and how they might be affected”, noted Ockert Jansen, Manager Marketing and Corporate Communication at BIPA.
In an effort to improve service delivery and ensure the effective administration of business and intellectual property rights (IPRs), the Business and Intellectual Property Authority (BIPA) has been established as the focal point for the registration of business and industrial property. BIPA is responsible for the administration and protection of business and intellectual property.
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