Mauritius – Good for Investment and IP Protection
In line with its growing relevance as an upper-middle-income economy, Mauritius’ IP regime is getting a makeover.
In the pipeline for some time, the new Industrial Property Bill was finally passed by Parliament on the 30th of July 2019 and published in the Government Gazette on the 10th of August 2019. The Bill will come into effect once the effective date is proclaimed – this is expected in the coming months.
Although the new Bill will not bring about significant changes to the landscape of traditional national trade marks, it does provide welcomed statutory clarity on certain aspects.
In this update, we touch on some of the changes with respect to trade marks, trade names, and Geographic Indications (GI’s). Some of the headline changes and clarifications include:
• Recognition of certification marks and a procedure for the registration of such marks.
• GI’s are recognised as a separate form of IP. Application, examination and opposition processes are prescribed, as well as provisions dealing with invalidation. The duration of the protection of GI’s will be 10 years.
• Specific provisions dealing with International Registrations (IR’s) and to govern the registration process.
• The distinction between “service marks” and “goods marks” will fall away, and both are simply recognised as trade marks.
• The head of the Industrial Property Office will no longer be known as the Controller but as the Director.
• The creation of an Industrial Property Council which is to advise the Minister on Intellectual Property matters and to ensure cooperation in the formulation of IP policies for industry.
• Cancellation applications will no longer be filed with the Controller, but with the Industrial Property Tribunal.
• Specific reference is made in respect of the refusal to register a mark if it is inherently non-distinctive.
• Express prohibition on the registration of:
a) marks which solely designate the kind, quality, quantity, intended purpose, value, geographic origin, time of production or of rendering of services, or other characteristics of goods or services;
b) shape marks where the shape results from the nature of the goods or provides a technical result;
c) terms customary in the relevant trade; and
d) marks the use of which would be contrary to law.
• Recognition of prior use (unregistered rights) as a basis for opposition.
• Introduction of Honest Concurrent Use applications.
• Introduction of division of an application into two or more separate applications, each retaining their initial filing or priority date.
• Explicit provision for the amendment of goods and services in respect of a pending application and amendment of a mark not substantially affecting its identity.
• Introduction of a five-year prescription period on instituting infringement proceedings.
• Provision for a two-month period to correct a formalities defect in an application. The filing date allocated will be the date of correction and not the initial filing date.
• The deadline to respond to office actions and refusals has been extended to six months.
• Express six-month grace period for late renewals and provision for re-registration (restoration of a lapse registration) if done within one year of the expiry of the registration.
• Introduction of partial cancellation.
No changes are proposed to the current provisions dealing with trade names.
Businesses with a commercial interest in Mauritius should stay tuned and consider adapting their Mauritian trade mark strategies once the new Bill comes into force, particularly regarding IR’s.
The expungement case in the Industrial Property Tribunal between Shangri-La Tours Ltd v Shangri-La International Hotel Management Limited (2019)
The Industrial Property Tribunal recently, in the expungement case of Shangri-La Tours Ltd, made several noteworthy comments and findings which may signal to investors that Mauritius is ready for investments and that they take IP rights seriously. The judgment contains more refences to European Union (CJEU) and United Kingdom decisions than it does to judgments of the Mauritian Courts and Tribunals. The Tribunal took considerable guidance from such international decisions.
Some noteworthy comments of the Tribunal are the following:
• PIDTA Patents, Industrial Designs and Trademarks Act 2002 was introduced in Mauritius to show the commitment of the Government to create an investment friendly environment in the country, while at the same time meeting their obligations towards the international community.
• It is squarely up to an applicant for expungement to prove, on a balance of probabilities, that the registration of the relevant mark is contrary to one or more of the provisions of PIDTA. The onus of proof does not shift to the registrant upon mere bald allegations from the applicant. Furthermore, expungement applications must be assessed at the date of the application for expungement.
• The Tribunal also took cognizance of the fact that the trade mark registrant had registered the same mark in several other countries to support the finding that the relevant mark is not descriptive or non-distinctive.
• The registration of a company name is an entirely separate issue from the trade mark registration procedure – the registration of a company name does not provide a company with an exclusive right to use the name, or with priority right to register it as a trade mark. It also does not mean that the company name would be considered distinctive for trade mark registration purposes. This statement should be seen as a wake-up call to existing businesses to also register their corporate names in Mauritius, if they have not already done so.
• Fictitious places names are not geographically descriptive or unregistrable as trade marks.
• With respect to marks contrary to morality or public order, the position in Mauritius stretches beyond the limits set in decisions of the European Courts, and that morality must be interpreted to include the social and financial considerations (i.e. sharp business practice), in addition to the traditional criminal and religious considerations.
In all, international industrial property rights owners (particularly those who own trade mark rights) should take comfort in the strong comments of the Tribunal and its willingness to be guided by international precedents in arriving at its decision, which decision ultimately protected a foreign brand owner over a local company. It is hoped that this judgment will spur on / guide other judicial officers and law enforcement officials to adopt a similar policy guided mindset when dealing with intellectual property rights matters.
During November 2019, we travelled to Port Louis in Mauritius to conduct Brand Identification Training with officials of the Mauritius Revenue Authority (“MRU”) as part of the annual REACT workshop.
The Workshop was well attended by the various officials from the MRU and the attendees expressed that this type of training is vitally important for them to effectively conduct their job. In accordance with this request, we are in discussions with the MRU to conduct further sessions during the course of 2020.
KEY OPPORTUNITIES & CONCERNS
- As the economy becomes increasingly advanced, making Mauritius likely to be Africa’s first high-income country soon, new technologies like renewable energy, ICT and deep water exploration are growing
- High-end tourism attracted by tropical island environment, with spectacular golf courses now favoured for international tournaments
- As part of economic diversification, the textile industry is expanding with trade access to the US market, while the finance sector has grown impressively
- Transportation is a consideration because of distance from the African mainland and trade routes
- Climate change presents a long-term danger with rising sea levels
- All electricity must be locally produced, and 79% is generated from polluting fossil fuels