May 17, 2017 (Newsletter Issue 9/17)
Requirement for Declaration of Intention to Use When Designating Lesotho
On March 31, 2017, the Government of Lesotho notified the Director General of WIPO of the requirement for a declaration of intention to use the mark when Lesotho is designated in an international application or subsequently.
The notification made by Lesotho will become effective on June 30, 2017.
WIPO will modify the form MM2 and form MM4 accordingly.
Source: www.wipo.int
The law governing intellectual property in Lesotho is the Industrial Property Order no. 5 of 1989, last amended by Act no. 4 of 1997 and the Industrial Property Regulations, 1989.
Lesotho became a member of the Paris Union on 28 September 1989 when the Paris Convention entered into force.
Lesotho has also acceded to the Banjul Protocol of ARIPO. However, ARIPO trademark registrations designating Lesotho may have no force or effect in Lesotho. Lesotho is a common law country, where it is generally held that “an international agreement can only become part of the domestic law of a subscribing country when it has expressly been enacted into that national law by an Act of Parliament”. There are no specific provisions under its national law for compliance with its obligations under the Banjul Protocol. The Industrial Property Order of 1989, does however contain a general clause, section 44, that reads as follows: ‘The provisions of any international treaty in respect of the industrial property to which Lesotho is a party shall apply to matters dealt with by this Order and, in case of conflict with the provisions of this Order, the provisions of the international treaty shall prevail.’ However, as Lesotho is a common law country, this general clause cannot overcome the requirement that, in order for an international treaty to have effect in Lesotho, it must be expressly and specifically transformed into municipal law by the enactment into the national legislature. Because Lesotho’s obligations in terms of the Protocol have not been enacted into domestic law by the national legislature, ARIPO trademark registrations designating Lesotho can have no force or effect in Lesotho. This lack of enforceability is confirmed by the fact that the Registry does not examine or keep any proper record of ARIPO trademark applications designating Lesotho.
Lesotho has also acceded to the Madrid Agreement and Protocol of WIPO. As mentioned above, the Industrial Property Order of 1989 does contain a general clause (Section 44) that says that provisions of international intellectual property treaties to which Lesotho is a party shall apply to matters dealt with in the legislation, but this does not overcome the requirement that, in order for an international treaty to have effect in Lesotho, it must be expressly and specifically transformed into municipal law through enactment by the national legislature. As a result, we hold the view that International Trade Mark Registration is neither valid nor enforceable in Lesotho.
Trademark protection is obtained by national registration.
Nice Classification, 11th edition
A mark is defined as any visible sign capable of distinguishing the goods or services of an enterprise. Registrable as trade marks are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, colour combinations, the three-dimensional form of goods or packaging and any combination of the abovementioned signs.
No express provision is made for the registration of colours, but such registration is in practice permitted.
The following types of trade marks are registrable: trademarks for goods and services and collective marks. There are no provisions for the registration of defensive marks, series marks or certification marks.
The application is filed with the Registrar of Trade Marks, Lesotho.
Multiple-class applications are possible. An application can include goods and/or services in any number of classes.
The following information and documents are required for registration:
- A power of attorney, simply signed
- Full particulars of the applicant
- 3 Prints of the graphic representation of the mark (if not a wordmark)
- Certified copy of the priority document (if applicable), with verified English translation.
Foreign applicants do not need a domestic registration to obtain registration in Lesotho. However, foreign applicants must be represented by a local agent.
The application process includes a formal examination, an examination as to distinctiveness, and a search for prior trademarks that have recently been captured on the IPAS system.
The Industrial Property Order is silent on whether marks that are not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use, although, noting that Lesotho is a common law country, this may be possible.
Once a trademark application has been accepted, it is published for opposition purposes.
The approximate time frame from application up to registration is approximately 36 months.
National:The opposition period is 3 months from the publication date of the application in the Official Gazette.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trade mark registration is valid for 10 years from the date of filing of the application for registration and may, upon request, be renewed for consecutive periods of 10 years, provided that the registered owner pays the prescribed renewal fee.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official application fee is M 400 for one class and M 100 for each additional class. The publication fee is M 250 and the registration fee is M 300.
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Common law rights are recognized in Lesotho. Therefore, a person who has acquired a reputation in a mark should be able to prevent others from using such a mark or any similar mark which may mislead, confuse or deceive the public and damage the person’s reputation (passing-off). Although the Industrial Property order is silent on this point, noting that Lesotho is a common law country, it is likely that the owner of a registered trademark may not interfere with or restrain the use of an identical or similar mark by any other person, if such use pre-dates the use or registration of the registered mark.
The Industrial Property Order is silent on the use of the symbol ®, and therefore, we are of the view that such use is optional in Lesotho.
Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Jul 06, 2023
Spoor & Fisher, Pretoria, South Africa