Madagascar

• Ordinance no 89-019 of 1989, Establishing Arrangements for the Protection of Industrial Property in Madagascar
• Decree no 92-993 of 1992, Implementing Ordinance no 89-019 of 1989, as amended by Decree no 95-057 of 1995

Madagascar is a member of the Paris Convention, the Madrid Protocol and the WTO/TRIPS.

Trade mark applications may be filed as national applications, in appropriate circumstances claiming convention priority in terms of the Paris Convention, or the country may be designated in international applications filed in terms of the Madrid Protocol.

Provision is made for the registration of trade marks for goods and for services, and for collective marks.

No express provision is made for the protection of well-known marks.

The registration of a trade mark confers on the owner the right to prohibit others from making commercial use of the mark (see the section on Rights conferred by registration below).

The following types of trade marks are registrable:

• Goods and service marks
• Collective marks.

A mark is defined to mean any visible sign intended and capable of distinguishing the goods or services of one enterprise from those of other enterprises. This definition is open ended and is in turn defined to include surnames, special, arbitrary or fancy denominations, the characteristic form of a product or of its wrapped presentation, labels, envelopes, emblems, prints, stamps, seals, colours, designs, reliefs, letters, devices, slogans, pseudonyms and any materialised signs that are sufficiently distinctive for the use for which they are intended.

A collective trade mark means any visible sign designated as a collective mark and capable of identifying the origin, quality, or any other common characteristic of goods or services of various enterprises which use the collective mark under the control of the owner.

Colours may constitute a trade mark.

The International Classification of Goods and Services (Nice Classification) is applied. A single application may cover more than one class.

Madagascar 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 Madagascar application is filed within six months of such earlier filing date.

An application is filed at the Malagasy Office of Industrial Property in French or Malagasy with a French translation.

The following information and documents are required:

• Full particulars of the applicant
• ·       power of attorney by the applicant (notarised), in French
• List of goods or services to be covered
• Electronic print of the mark
• Certified copy of the priority document (if applicable), in French.

Prior to registration, the application will be subjected to an administrative and substantive examination. If the application meets the formal and substantive requirements for registration, it shall proceed to registration. Notification of grant will be published in the Official Gazette of Industrial Property.

It is not possible to oppose a trade mark application in Madagascar. It is, however, possible to apply to court to have a trade mark registration declared null and void (see the section on Cancellation/removal of a trade mark below).

In general, Madagascar follows a first-to-file system in respect of trade marks. This means that the first person to file for its registration, is the owner of a mark.

However, the competent court may, in certain situations and at the request of a competent authority or of any person proving a legitimate interest, and after having given the owner an opportunity to be heard, declare null and void the registration of a mark with effect from the date of registration.

If, however, a registered mark has been used publicly and continuously by the owner of the registration in Madagascar for at least three years without having given rise to legal action that has been upheld, the mark shall belong to the owner of the registration without possible opposition on the grounds of prior use by another person, unless it is proved that at the time of filing the applicant could not have been unaware of such other person’s mark.

The grounds for cancellation include:

That the mark does not fulfil the definition of a trade mark, i.e. does not consist of a visible sign intended and capable of distinguishing the goods or services of one enterprise from those of other enterprises

That use of the sign is contrary to public policy or morality and, in particular, is liable to deceive trade circles or the public as to the nature, the source, the manufacturing process, the characteristics or the suitability for their purpose, of the goods or services concerned

That the sign reproduces or imitates the armorial bearings, flags and other emblems, official signs or hallmarks adopted by a state, or initials, names or abbreviations of names of any state or of any intergovernmental international organisation, without the authorisation of such a state or organisation

That the sign is incapable of distinguishing, particularly where:

• The sign consists of the shape of the goods concerned or of their packaging and such form is imposed by the inherent nature or function of the goods or of their packaging
• The sign consists exclusively of an indication which may serve, in the course of trade, to designate the kind, quantity, quality, intended purpose, value, time of production or of supply or other characteristics of the goods or services
• The sign consists exclusively of an indication which has become, in the current language or in the bona fide and established practices of local trade, a customary designation of the goods or services concerned

That the sign consists of a geographical indication liable to mislead as to the geographical origin of the goods and services concerned or which, if it were registered as a mark, would unduly interfere with use of the geographical indication by other persons that are entitled to use such indication

That the sign conflicts with a prior right:

• Where a mark belonging to a party or a collective mark is the subject of a registration or of a pending application and another party files an application for registration as a mark, for identical or similar goods or services, of a sign that is identical to the earlier mark, or similar to the extent of probable confusion, the latter sign is deemed to conflict with a prior right
• Where the earlier mark has ceased to be registered one year at the most before the date on which the application is filed by the later party, or where the collective mark has ceased to be registered five years at most before such date.

Where the grounds of nullity apply to only one class of goods or services, or to certain goods within a certain class, nullity of the registration shall be declared for that part of the goods or services only.

In addition, the property right in a mark shall lapse for failure to use the mark within a period of three years as from the date of registration, unless the owner of the mark is able to produce legitimate reasons for his failure to use the mark (see the section on Use requirement below).

Furthermore, any person who has allowed his mark to fall into the public domain or become everyday language without having taken measures to prevent abuse, shall forego his rights in that mark.

A trade mark registration is effective for an initial period of 10 years from the date of filing and is thereafter renewable for like periods subject to payment of the prescribed fee. Late renewal is possible within a grace period of six months, subject to payment of a penalty fee.

A trade mark registration shall lapse if the registered mark is not used within a period of three years from the date of registration, unless the owner of the mark is able to produce legitimate reasons for his failure to use the mark.

Assignments of trade marks are possible and may be made with or without the goodwill of the business, and in respect of some or all of the goods or services covered by the registration. An assignment must be in writing and recorded in the register in order to be enforceable against third parties.

Requirements for recordal:

• The assignment must be in accordance with the prescribed form
• Power of attorney (notarised)copy of the authentic instrument of assignment or transfer bearing the signatures of the parties to the contract (notarised), accompanied by a translation into either in Malagasy or French
• Approval by the government.

Voluntary licensing of a trade mark is recognised. A licence agreement must be in written form and must be signed by the parties, failing which it shall be null and void.

A licence agreement may be recorded on payment of the prescribed fee. No person may rely on the fact that he or she did not have knowledge of a recorded licence agreement.

Requirements for recordal:

• The agreement must be in accordance with the prescribed form
• Power of attorney (notarised)
• Copy of the licensing contract duly signed by the parties (notarised), accompanied by a translation into either Malagasy or French
• Approval by the government.

No express provision.

In terms of the Ordinance, the registration of a trade mark shall afford its owner the right to prohibit others from carrying out the following acts:

• Any commercial use of the mark or sign or of a trade name resembling it in such a way as to mislead the public, for goods or services for which the mark is registered or for other goods or services for which use of the mark or sign could mislead the public
• Any other use of the mark or of a sign or a trade name resembling it, without just cause and under conditions likely to be prejudicial to the owner of the mark.

Any person who, without the authority of the trade mark owner, makes any commercial use of the registered mark, or a mark so closely resembling it as to mislead the public, on identical or similar goods, commits an infringement. Any infringement of the rights under a mark constitutes an offence.

Registration of a mark shall not afford to its owner:

• The right to prohibit others from using in good faith their names, addresses, pseudonyms, geographical names, or accurate statements about the type, quality, quantity, purpose, value, standards, place, origin or period of production of their goods or the provision of their services on condition that the use is limited to the purpose of simple identification or information and does not mislead the public as to the source of the goods or services
• The right to prohibit others from using the mark in relation to goods lawfully sold by the trade mark owner or a licensee in the country under that mark, provided that such goods have not undergone any change
• The right to prohibit the publication of specific studies or of comparative tests of goods or services of various brands for the use of consumers.

Both civil and criminal proceedings are possible. Any infringement of the rights under a mark shall constitute an offence punishable by imprisonment and a fine. Seizure and confiscation of infringing articles can be ordered by the court, as well as damages.

Common law rights do not appear to be recognised. The Ordinance provides that no person may claim an exclusive right in a mark unless a valid application has been filed.

Products carrying the trademark can be marked and products destined for Madagascar should contain indications of the country of origin.