The Gambia

• Industrial Property Act no 12 of 1989, PART V
• Industrial Property Regulations, 2010

The Gambia is a member of the Paris Convention and the WTO/TRIPS.

Provision is made for the registration of marks for goods (trade marks) and for services (service marks), as well as for collective marks. The Act also provides for the protection of trade names.

A mark cannot validly be registered if it is identical or confusingly similar to, or constitutes a translation of, a mark that is well known in The Gambia for identical goods or services of another enterprise.

The use of a registered mark by any person other than the registered owner, requires the consent of the owner.

The registered owner of a mark further has the right to institute court proceedings against any person who infringes the mark by using the mark without the authority of the owner.

The following types of trade marks are registrable:

• Goods and service marks
• Collective marks.

While the Act does not specifically refer to word and/or device marks, it allows registration of any visible sign capable of distinguishing the goods or services of an enterprise. This would appear to include marks comprised of both words and devices.

A collective mark is defined to mean any visible sign capable of distinguishing the origin or any other common characteristic, including the quality, of goods or services of different enterprises that use the sign under the control of the registered owner.

No express provision, but permitted in practice.

The International Classification of Goods and Services (Nice Classification) is followed. A single application may cover more than one class. However, in practice, the Registrar will insist on a separate application being filed for each class.

The Gambia is a member of the Paris Convention. An applicant for a trade mark who has applied for the same mark in another Paris Convention member country, is entitled to a priority right. This accords them the same effective date as the first filed application, provided The Gambia application is filed within six months of such earlier filing date.

An application is filed with the office of the Registrar General, headed by the Registrar of Trade Marks and Patents and operated under the supervision of the Ministry for Justice.

The following information and documents are required:

• Full particulars of the applicant
• Power of attorney (simply signed)
• Electronic print of the mark
• List of the goods or services
• Clear representation of the dimensions of a three-dimensional mark
• Translation or transliteration of words not in English, stating to which language each belongs
• Certified copy of the priority document (if applicable).

The Registrar examines the application as to formalities as well as on relative and substantive grounds. If the Registrar finds that the requirements have been met, he accepts the mark and publishes the mark.

Any person may, within three months of publication, or such further time as the Registrar may allow (not exceeding nine months in total), give notice of opposition to the Registrar. Ultimately, however, an opposition must be heard by the High court (see the section on Opposition proceedings below).

Opposition proceedings are set out in detail in the Act. a notice of opposition setting out the grounds of opposition is filed with the Registrar General, who sends a copy to the applicant. The applicant is afforded one month after receipt of the notice (which period may be extended by the Registrar up to three months) within which to file a counter-statement. If the applicant fails to submit a counter-statement, the application is deemed to have been abandoned and he may be liable to the opponent for costs.

If a counter-statement is filed by the applicant, the Registrar will send a copy to the opponent and require him to give security for costs. If the opponent fails to furnish security timeously, the opposition shall be deemed to be withdrawn. If security is given, the opposition is ready for determination by the High Court. This entails the applicant making application to court, within one month, for an order that, notwithstanding the opposition, the mark should proceed to registration. If the applicant fails to make such application or take other steps, the application shall be deemed to be abandoned.

The court has the power to award any costs order it deems appropriate in these proceedings.

The grounds for opposition are set out in the Act and include:

• That the mark is incapable of distinguishing the goods or services of one enterprise from those of other enterprises
• That the mark is contrary to public order or morality
• That the mark is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics
• That the mark is identical to, or an imitation of, or contains armorial bearings, flags, emblems of any State, inter-governmental organisation, etc
• That the mark is identical to, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in The Gambia for identical or similar goods or services of another enterprise
• That the mark is identical to a mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

A trade mark registration is effective for an initial period of 10 years from the filing date or the priority date of the application (whichever is the earlier) and is thereafter renewable for like periods of 10 years upon payment of the prescribed renewal fee. The renewal fee should be paid within the six months preceding expiry of the registration, but a grace period of six months is allowed for the late payment of the renewal fee, on payment of the prescribed surcharge.

The legislation does not specifically make provision for cancellation/removal of a trade mark, other than on the grounds of non-use (see the section on Use requirement and cancellation below). However, it is presumed that an interested person could make application to court for the removal of a mark on any of the grounds upon which an opposition could have been based.

Any aggrieved person may apply to the court for a registered mark to be taken off the register if the proprietor or his predecessor in title had no bona fide intention to use the mark when applying for registration and has indeed not used such mark; or if there was no bona fide use of such mark during the five years immediately preceding the application. A mark will not be expunged if the non-use is shown to be due to special circumstances in the trade.

Assignments are possible but shall be invalid where such assignment is likely to deceive or cause confusion in regard to the nature, origin, manufacturing process, characteristics, or suitability for their purpose, of the goods or services in relation to which the mark is used or proposed to be used. Recording of an assignment is necessary to be effective against third parties.

Requirements for recordal:

• Power of attorney by the assignee (simply signed)
• Copy of the assignment agreement (notarised if it originates from outside The Gambia)
• Publication by the Registrar (except in the case of a pending application).

Licensing of a trade mark is recognised. A licensing contract has to be submitted to the Registrar for the licence to be valid. The Registrar must keep the contents (which has to be reasonable and not place undue restrictions on the licensee) confidential but shall publish a reference to the licence.

A licence contract must provide for effective quality control by the licensor, failing which the licence shall be invalid.

Requirements for recordal:

• Power of attorney by the licensor and licensee (simply signed)
• Copy of the licensing contract (notarised if it originates from outside The Gambia)
• Publication of certain information by the Registrar.

Any translation or transcription error, clerical error or mistake in any application or document filed may be corrected by the Registrar. However, no addition to or expansion of the goods or services covered, or any alteration to the representation of a mark, may be occasioned by an amendment. An applicant may also withdraw his application at any time while it is pending.

The registration of a trade mark requires any person, other than the registered owner, who wishes to use the mark, to obtain the consent of this owner.

Furthermore, the registered owner of a mark is afforded the right to institute court proceedings against any person who infringes the mark by using the mark without the agreement of the owner.

he infringement of a registered trade mark may give rise to either a civil action or a criminal action, or both. Civil proceedings must be brought in the High Court.

The grounds for infringement include the following acts:

• Using the registered trade mark in relation to goods or services for which the trade mark has been registered without the registered proprietor’s authorisation, or performing any act which makes it likely that such infringement will occur
• Using a mark which is similar to the registered trade mark in relation to goods or services similar to those for which the mark has been registered, where confusion may arise in public.

The rights conferred by registration of a trade mark shall not extend to acts in respect of articles which have been put on the market in The Gambia by the registered owner or with his consent.  No other specific defences are provided for in the legislation.

A court may grant the following relief in infringement cases:

• An injunction to prevent infringement
• Damages
• Any other remedy provided for by any other law in force.

In the case of a criminal action, the penalties are a fine or imprisonment, or both.

No express provision.

Neither the Act nor the Regulations contain any provisions as to how goods may be marked to indicate that the mark has been registered.