Trade Marks and Trade Names
The Patents, Industrial Designs and Trademarks Act (“the Act”) came into force on January 6, 2003. The Act distinguishes between three categories of marks: trademarks, service marks and collective marks. Any mark belonging to any of these categories is always a visible, distinctive sign, serving to distinguish the goods or services of one or more enterprises from those of another. In differentiating the goods, services, or marks of the three categories, the objectives of each category must be taken into consideration.
The "trademark" is the classic mark. The goods may be either manufactured products or natural products; they may be produced or merely sold by the owner of the mark or may be distributed by him without charge, as in the case of wrappings or advertising material.
The "service mark" is the fruit of a more modern notion. This mark fulfills the same function of distinguishing but it distinguishes the services of an enterprise (or of licensed enterprises), and not the goods, from those of other enterprises. These services may be of almost any kind, e.g., publicity, transport, insurance, laundry, treatment of materials.
The "collective mark" serves also to distinguish goods or services. However, it does not distinguish the goods or services of an individual enterprise from those of other enterprises, but rather goods or services which are produced by different enterprises having a common origin or other common characteristics. The registered owner of such a mark can be one of those enterprises, but may also be a third party, generally a cooperative or an association of enterprises or a public institute charged with controlling the use of the mark. A collective mark must be designated as such when an application is filed for its registration. The purpose of this requirement is to distinguish collective marks from trademarks and service marks in order to process and register them accordingly.
Acquisition of the Exclusive Right to a Mark
The statutory exclusive right to a mark is secured by registration obtained through fulfillment of the conditions for registration contained in this Act. The essential requirement of which is that a mark must be capable of distinguishing the applicant's goods or services from those of others. A mark that is only descriptive would not satisfy this requirement.
The Act prohibits marks which are contrary to public order or morality (e.g., obscene pictures or words) and marks that are likely to mislead consumers or trade circles as regards the source or other characteristics of the goods or services concerned. For example, a component in the mark may suggest that the goods concerned have a particular country of origin, whereas, in fact, the goods emanate from a different country; the component may suggest that the goods are made of natural products (e.g., cotton) whereas they are made of synthetic material. Marks which, without authorization, reproduce or imitate armorial bearings, etc., of States or international organisations are excluded.
Furthermore marks which, in effect, reproduce well-known marks belonging to other persons are also excluded. There would undoubtedly be confusion in the minds of the public if such marks were registered and used by persons who were not their owners. This provision seeks to prevent the dilution of the reputation of the well-known mark and to prevent damage to the interests of its owner.
The Act provides for the protection of third-party prior rights on the register. It is mandatory for an application to be refused, in opposition or invalidation proceedings, if the mark is identical to, or confusingly similar to, a mark already recorded on the register in the name of a different person in respect of the same or closely related goods or services.
Application for Registration
The Act introduces the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. This classification is applied in an ever-growing number of countries and ensures consistency of treatment in classification matters. An application may be made in respect of more than one class of goods or services, subject, naturally, to a corresponding increase in the application fee. The application may contain a declaration claiming priority, as provided for in the Paris Convention for the Protection of Industrial Property of 1883, of an earlier national or regional application.
Examination & Opposition
The Act provides for a procedure under which, after the positive result of an examination for compliance as regards registration, applications are advertised so that interested persons may file an opposition to the registration. Oppositions are decided upon by the Controller, and the registration effected or refused as the case may be. The examination procedure is relatively simple. The Controller is required, in considering the merits of the case, to hear the parties if either or both wish to be heard. The decision of the Controller is subject to an appeal before the Tribunal specially established for industrial property matters. The decision of the Tribunal is subject to an appeal to the Supreme Court.
Rights Conferred by Registration
The owner of a mark has the right to institute proceedings against any person who infringes or threatens to infringe the rights of the owner of a registered mark which is the owner's most important right. This right, where confusion could arise in the public, extends to the use of a mark which, though not identical to the registered mark or not used in relation to the same goods or services, is similar to the registered mark and is used in relation to goods or services similar or related to those for which the mark was registered.
Once registered, a mark is protected for a period of ten years. The duration is computed from the filing date of the application. This does not mean that the protection commences from the filing date. It only means that the starting point for calculating the duration is the filing date. The protection commences from the date of registration. Unlike patents and industrial designs, marks may be protected indefinitely for consecutive ten-year periods, provided the owner pays the renewal fee. The renewal is effected upon request by the registered owner without the necessity of ascertaining whether the mark is actually used.
Invalidation & Removal on Grounds of Non-Use
The Act establishes the possibility of invalidating registered marks which do not satisfy the specific fundamental requirements of the law. An interested person may apply for the removal of a mark from the register, in respect of any of the goods or services for which it is registered, on the ground that up to one month prior to the filing of the application it had not been used at any time during a continuous period of three years or longer. The one month period before the filing of the application for removal is to enable the interested person to approach the registered proprietor, in advance, to seek his voluntary cancellation of the mark without the risk of the proprietor commencing to use his mark immediately upon learning that his registration is likely to be attacked on the ground of non-use. Failure to use a registered mark is excused where such failure is attributable solely to circumstances which are beyond the control of the registered proprietor, and not to any intention of abandoning or non-using the mark.
Licensing of Marks
The Act protects consumers by ensuring effective quality control when marks are used under license. Where the quality control is not effectively carried out the license is not valid. Since a collective mark may be used only by persons who fulfill the requirements of the regulations governing its use, this subsection does not allow collective marks to be licensed.
A trade name is a name or designation identifying and distinguishing an enterprise. It may consist of the name of the owner of the enterprise or of his pseudonym, or of an invented name, or of an abbreviation, or of a description of the enterprise or of any other designation. The choice of a trade name is more restricted than that of a mark: many of the examples of types of marks, such as devices, reliefs and labels, cannot be used as trade names because the latter must be a name or designation.
The Act places still further limits upon the choice of a trade name. A trade name, and the use to which it may be put, must, in the first place, not be contrary to public order or morality. An obscene name or a name identical or similar to the name of a public authority would be examples in point. Furthermore, a trade name must not be liable to deceive trade circles, or the public, as to the nature of the enterprise identified by it. It should not, for example, indicate that an enterprise is a local enterprise when, in actual fact, it is foreign. Nor should it give the impression that the enterprise which it identifies has a scope of activities different from that which it actually has. In order not to deceive trade circles or the public, a trade name should also not be identical or similar to another trade name which is no longer used but is well known to the public.
The Act provides for the protection of trade names independently of registration, even if such registration is otherwise mandatory under other laws or regulations. Unregistered trade names are protected against acts likely to cause confusion as provided in the Act. Protection of this kind is clearly in the interest of the public.
The Act specifies what, in particular, constitutes an unlawful act against which trade names are protected, i.e., any subsequent use by a third party of the name itself, whether as a trade name or as a mark, and any such use of a similar trade name or mark, if likely to mislead the public. A trade name does not have to be distinctive; it can consist of a very common surname or of a description of the enterprise. In such cases, the same surname or description may be used by others, provided the likelihood of confusion to the public is avoided.
Change of Ownership
The Act provides that changes in ownership must be in writing and must be submitted to the Controller for recording. Collective marks are placed in a special category. The transfer of ownership of a collective mark should be allowed less freely than that of an individual mark because collective marks imply, more than ordinary marks, a guarantee of origin, quality, or other characteristics, so that a change in ownership may be more likely to mislead or confuse consumers. Since a trade name (unlike a mark) identifies an enterprise, or part of it, a change in ownership in respect of a trade name is allowed only if it occurs together with a change of ownership of the enterprise or of the part of it identified with the trade name. The Act imposes an obligation on the parties to a license contract to submit the contract to the Controller for recording and for a publication of a reference thereto.
The Act ensures that applicants resident outside the territory of Mauritius are represented by a local attorney or agent admitted to represent clients before the Controller.