Law

Law no 4 of 2001 on Industrial Property

Decree no 6 of 2004 on Regulation on Industrial Property

Sao Tome and Principe is a member of the Paris Convention and the Madrid Protocol.

The Industrial Property Law of Sao Tome and Principe is silent on whether recognition is given to trade mark applications which are filed in terms of the Madrid Protocol which designate this country.  It would appear, however, from the context of the provision in the Industrial Property Law which recognises and gives effect to Sao Tome and Principe’s treaty obligations, that there was an intention to implement these treaties.

Applications may be filed as national applications and, in appropriate circumstances, claiming convention priority in terms of the Paris Convention.  International applications filed in terms of the Madrid Protocol may also designate Sao Tome and Principle.

Trade mark protection

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

No express provision is made for defensive marks.

Protection of well-known marks

A mark cannot validly be registered if it is identical or similar to a trade mark that is well known in Sao Tome and Principe for similar goods, and the use of the later mark is likely to cause confusion.

Types of trade marks

The following types of trade marks are registrable:

  • Product and service marks
  • Collective marks

Definition of a trade mark

A mark is defined to mean any visible sign capable of graphic representation distinguishing the products or the service of a company from those of other companies.

Limitation to colour

There is no express reference to colour.

Classification

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

Convention priority

Sao Tome and Principe is a member of the Paris Convention.  . An applicant for a trade mark who has applied for the same trade 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 Sao Tome and Principe application is filed within six months of such earlier filing date.Examination/procedure

Prior to registration, the application will be subject to formal and substantive examination.  If the application meets the formal and substantive requirements for registration, it will be published in the Official Journal for opposition purposes.  The applicant will, if no opposition is filed, or if an opposition is unsuccessful, be notified that the application has proceeded to grant.

Opposition

Third parties may oppose an application within 90 days of advertisement in the Official Journal.  The Director of Industry may, under conditions determined by him, extend the opposition term.

Duration and renewal

A trade mark registration is effective for an initial period of 10 years from the date of filing and is renewable thereafter for similar periods subject to payment of the prescribed fee.  A grace period of six months is allowed for such payment, provided that a penalty is paid.

Use requirement and cancellation

A trade mark registration is vulnerable to cancellation if the registered mark has not been used within a period of five years from the date of registration, unless the owner of the mark proves that special circumstances made it impossible to use the mark and that there was no intention to abandon it.

Assignment

Assignments are possible.  The Industrial Property Law is silent on the issue of whether assignment may be made with or without the goodwill of the business.  This law is also silent on the issue whether it is possible to assign the mark in respect of some or all of the goods or services covered by the registration.

Any assignment of a registered mark must be in writing and recorded at the National Office of Industrial Property.

Requirements for recordal:

  • Power of attorney from the assignee (simply signed), in Portuguese
  • Deed of assignment, with sworn Portuguese translation.

Licensing/registered users

Licensing of a trade mark is recognised.  A licence agreement must be in written form and must be recorded at the National Office of Industrial Property in order to be enforceable against third parties.  A licence agreement must provide for effective control by the licensor over the quality of the goods or services of interest.  A licence agreement shall not be valid unless the quality control is effective.

A collective mark cannot be licensed.

Requirements for recordal:

  • Power of attorney from both the proprietor and licensee (simply signed), in Portuguese
  • Licence agreement, with sworn Portuguese translation.

Amendment

The National Office of Industrial Property may invite an applicant to correct any material error, error of translation, transcription, inscription, and/or any error contained in an application or document deposited at the National Office of Industrial Property which arose as a result of negligence.

Patent protection

Patent protection is obtainable by a way of a national application and convention priority may be claimed in appropriate circumstances, by way of a national phase application under the PCTor via ARIPO designating São Tomé and Principe.

Patentable subject matter

The following inventions are not patentable

  • discoveries, scientific and mathematical theories
  • Discoveries aimed at making known or revealing something that already exists in nature, notwithstanding that it was previously unknown to Man
  • Computer programmes
  • Aesthetic creations and artistic or literary works
  • Presentation of information
  • schemes, plans, rules or methods for doing business, performing purely mental acts or playing games
  • methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods (this provision shall not apply to products for use in any of these methods)
  • Substances, materials, mixtures, elements or products of any type, resultant from atomic nuclear transformation, as well as the modification of their physical and chemical properties and the respective processes of obtaining or modifying them.
  • . Inventions whose commercial exploitation would be contrary to law, public order, national security, public health and morality,
  • The human body in its various stages of formation and development, as well as the simple discovery of one of its elements, including the sequence or partial sequence of a gene

Plant varieties and animal breeds, as well as essentially biological processes for the production of plants or animals, without prejudice to the provisions contained in international agreements to which S. Tomé and Principe has acceded.

Novelty

An invention is considered to be new if it has not been made available to the public by means of a written or oral description, or by disclosure in any other way anywhere in Sao Tome or abroad. A grace period of 12 months prior to the date of filing, or the priority date is available where the disclosure was before

scientific societies, professional technical associations, be it by virtue of competitions, exhibitions and fairs in São Tomé and Príncipe, or international, official or officially recognized ones in any member country of international organizations for industrial property of which S. Tomé and Príncipe is part, or

disclosures resulting from obvious abuse in relation to the inventor or his successor or incorrect publications by the São Tomé and Principe Patent Office

Examination/procedure

The IP office carries out examination on substantive grounds, including a limited examination as to novelty and an examination as to novelty following opposition by third parties.  Patent applications are subjected to formal examination and limited substantive examination.

Duration and maintenance

A granted patent is valid for a period of 20 years from the filing date subject to payment of annual maintenance fees on the anniversary of the filing date. A six-month grace period is available for late renewal.

Design protection

Design protection can be obtained via national filing in São Tomé and Principe, by way of an international registration in terms of the Hague Agreement, designating São Tomé and Principe or via ARIPO designating São Tomé and Principe.

Registrable subject matter

An industrial design is defined as any assembly of lines, colours or any forms of three dimensions, associated or not with lines and colours, provided that assembly or that form provides for a special aspect to an industrial or craft product, and can be used as a model for manufacturing an industrial or craft product.

Designs which serve solely to obtain a technical result are excluded from protection.

Novelty

An industrial design shall be deemed new if it has not been disclosed anywhere in the world by a publication, or in São Tomé and Principe by oral disclosure, by use or in any other way prior to the filing or priority date.

A 12 months disclosure grace period is available wherein the disclosure to the public was by the creator or his successor or by a third-party following information provided or measures taken by the creator or his successor or the disclosure was a consequence of an abuse in relation to the creator or his successor in title.

A 6 months disclosure grace period is available wherein the disclosure was at an exhibition or at an official or officially recognized international exhibition which falls under the provisions of the Conventions relating to International Exhibitions to which São Tomé and Príncipe is a party.

Examination/procedure

Applications are subjected to formal examination and limited substantive examination.

Duration and maintenance

The initial term of the design registration is five years, which is extendible for equal periods, to a maximum of 25 years upon payment of renewal fees within the last  6 months of the term.

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