Despite enacting new Design and Patent legislation in 2012, the much-anticipated promulgation of the amended Trade Marks Act has been in limbo for several years. However, the Sierra Leone Registry has now indicated that is applying the Trade Marks Act No. 8 of 2014 (the new Act). This follows a long period of uncertainty concerning the applicable legislation in Sierra Leone, as the new Act was reportedly returned to Parliament after being published in the Gazette of 9 October 2014, in order for certain technical issues to be resolved.
To date, however, no formal notice has been issued confirming the effective date of the new Act.
Changes to the Trade Marks Act no. 17, Cap 244 of 1960
The new Act repeals the Trade Marks Act no. 17, Cap 244 of 1960 (the old Act) and introduces significant changes to the trade mark law in Sierra Leone. Most notably, the new Act incorporates the following changes:
- Adoption of the Nice Classification of Goods and Services and the registration of service marks. Previously under the old Act, trade mark applications were filed using the old (pre-1938) UK Classification of Goods, which inter alia does not recognise service marks;
- Recognition of International Trade Mark Agreements signed by Sierra Leone, which can be interpreted to mean that the new Act affords recognition to International Registrations. However, procedurally, there will be significant challenges;
- Provision for the registration of collective marks;
- Provision for the claiming of priority rights under the Paris Convention;
- Recognition of well-known marks;
- Duration of trade mark registrations changes from 14 years to a 10-year period calculated from the date of filing of the application and trade marks may be renewed for consecutive periods of 10 years;
- Establishment of an IP Tribunal with considerable powers, such as hearing appeals, invalidations, infringements and criminal offences;
- Publication of assignments upon recordal;
- Inclusion of licensing provisions;
- Inclusion of additional grounds for opposition;
- Inclusion of more detailed provisions regarding infringement: – that infringements will be extended to similar goods, damages may be awarded for infringement and intentional infringement is a criminal offence; and
- Provision for unfair competition, trade names and false trade descriptions.
The old Act is Outdated and Inadequate
To date, no new Regulations have been drafted under the new Act. In this regard, section 60 of the new Act provides that the Regulations passed under the old Act will remain in force until amended or revoked under the new Act. The new Act also provides that the repeal of the old Act will also not affect the validity of any marks or rights vested under the old Act and those rights will continue to be enforceable as if they are conferred under the new Act.
The Regulations passed under the old Act are as outdated and inadequate as the old Act under which they were promulgated. Notably, the old Regulations make no provision for the application of the Nice Classification of Goods and Services, nor do they provide for the registration of service marks.
Although no formal notice has been issued confirming the effective date of the new Act or passing of new Regulations, the Registry is accepting the filing of trade mark applications made under the Nice Classification of Goods and Services.
While we await confirmation of the effective date of the New Act, trade mark owners may wish to consider protecting their service marks in Sierra Leone.
In addition, we note that as of 11 January 2019, the Registry’s official fees in Sierra Leone have increased. The increase is in accordance with Legislative Instrument No. 2 of 2019 of the Finance Act, 2019. We are in the process of updating our tariffs to reflect the increased official fees.
For assistance or information in respect of intellectual property protection in this jurisdiction, please e-mail firstname.lastname@example.org
(All statistical images courtesy of our Africa Intelligence partners, In On Africa. Kindly Acknowledge In On Africa ACBR 2018 if republishing.)
Nazli Naidoo | Associate
Sisipho Ngoma | Associate