Law

  • Industrial Property Act no 7 of 2014
  •  Industrial Property (Mark) Regulations, 2014
  • Industrial Property (Geographical Indicators) Regulations, 2014

Seychelles is a member of the Paris Convention.

Trade mark protection

Trade mark protection may be obtained by way of a national filing in Seychelles; or by way of a convention application claiming the priority of an earlier application in a convention country.

Provision is made for the registration of trade marks for goods and services; for three-dimensional marks, collective marks, certification marks, geographical indicators and trade names.

Protection of well-known marks

The Industrial Property Act provides that the owner of an unregistered mark that is well-known in Seychelles has the exclusive right to prevent unauthorised use in the course of trade of any sign that is identical with or similar to the unregistered well-known mark for goods and services for which the unregistered well-known mark is used provided that such use is likely to confuse the public. A trade mark may also not be registered if it constitutes a reproduction, an imitation, or translation of a mark that is well-known in Seychelles where the goods or services are identical or similar, and there is a likelihood of confusion, or where the goods or services are dissimilar but use would indicate a connection with the owner of the earlier registered well-known mark and the interests of the owner of the earlier registered well-known mark are likely to be damaged by such use.

Advantages of trade mark registration

The advantage of the registration of a trade mark is that the registered owner gets the exclusive right to use, and to authorise others to use, the registered mark. The owner is also entitled to institute proceedings and recover damages for infringement in terms of the Act.

Types of trade marks

The following types of trade marks are registrable:

  • Goods and service marks
  • Three-dimensional trade marks
  • Certification marks
  • Collective marks
  • Geographical indicators
  • Trade names.

Definition of a mark

A mark is defined as any sign capable of distinguishing goods (trademark) or services (service mark) of one enterprise from those of other enterprises.

Definition of a certification mark

Means any mark that distinguishes goods or services that are certified by the owner of the certification mark in relation to origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics from other goods or services not so certified.

Definition of a collective mark

Means any mark that belongs to a collective entity such as a cooperative, an association or a federation of industries, producers or traders and that distinguishes the goods or services of the members of the collective entity from the goods or services of other enterprises.

Definition of a geographical indicator

Means an indication that identifies goods as originating in the territory of a country; or a region or locality in that territory, where a given quality, reputation or other characteristics of the goods is essentially attributable to its place of origin.

Definition of a trade name

Means the name or designation identifying and distinguishing an enterprise.

Limitation to colour

It is possible to claim colour as a distinctive feature of a mark, by submitting a statement to that effect, as well as the name or names of the colour or colours claimed and an indication, in respect of each colour, of the principal parts of the mark which are in that colour.

Classification

The International Classification of Goods and Services (Nice Classification) is applied.

Convention priority

Seychelles is a member of the Paris Convention and it is possible to claim convention priority. 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 Seychelles application is filed within six months of such earlier filing date.

Application

An application is filed with the Registrar.

The following information and documents are required:

  • Full particulars of the applicant
  • A reproduction of the mark, specifically a graphical representation in the case of device or logos marks
  • Power of attorney
  • Certified copy of the priority document (if applicable).

Examination/procedure

Applications are examined as to inherent registrability, as well as for conflict with prior applications or registrations. Upon acceptance, the application is to be advertised.

Opposition

Interested parties may oppose an application within 60 days of advertisement of the acceptance of the mark.

Opposition proceedings

Any person may, within 60 days from the date of advertisement, and upon payment of the prescribed fee, file an objection, in writing.  The objection must include a statement of the opponent’s grounds of opposition.

The Registrar shall send a copy of the notice of opposition to the applicant and, within one month after the receipt, the applicant must send to the Registrar a counter-statement. The Registrar can allow an extension of this period, which extension cannot exceed three months.  If the applicant does not file a counter-statement, the application shall be deemed to have been withdrawn.

The Registrar will then send a copy of the counter-statement to the Opponent. The Registrar will thereafter decide the merits of the case. This may include hearing either party.

The Registrar will furnish copies of its decision to the applicant and the Opponent within the period prescribed by the Regulations. At the time of writing there is, however, no time period prescribed in the Regulations and this is therefore discretionary.

Grounds of opposition

The registration of a trade mark may be opposed on the following grounds:

  • That the mark does not meet the definition of a certification, collective, geographical indication, mark or trade name
  • That the mark is incapable of distinguishing the goods or services of one person from those of other persons
  • A prior user of a mark whose name does not appear in the Register or who does not have an application pending may oppose an application for registration of a similar or identical mark by another person for similar or identical goods, provided he or she:
    • Proves that he or she has used the mark in good faith for at least six months prior to the filing date or priority date of the application
    • Proves that he or she has acquired clientele and that this clientele attaches a certain reputation to the mark, and
    • Files an application for registration of his or her own mark before lodging a statement of opposition with the Registrar.

Duration and renewal

A trade mark is valid for ten years, and thereafter renewable for consecutive periods of 7 years.

A 6 month grace period is allowed for the renewal of a registration, along with the payment of a penalty fee.

One exception to the duration of registration is that the term of a registered geographical indication will be indefinite, provided that the specific characteristics, quality or reputation which were the basis for the grant of protection continue to exist.

Invalidation/removal of a trade mark

The Industrial Property Act provides for removal of a mark from the register on the basis of non-use and for invalidation of a registration on the basis that any of the registrability requirements have not been fulfilled.

Removal on the grounds of non-use

Any interested person may apply to the Court to order the removal of a mark from the Register in respect of any goods or services for which it is registered on the ground that the mark has not been used by the registered owner or a licensee for an uninterrupted period of three years or more.

A trade mark registration shall not be removed if any non-use of the mark has occurred due to special circumstances preventing the use of the mark and there was no intention on the part of the proprietor not to use or to abandon market in respect of the particular goods or services.

Invalidation of a registration

Any interested person may apply to the Court to invalidate the registration of a mark. Invalidation may be requested on any basis on which the mark could have been opposed or that the requirements for registration were not met.

Assignment

The registered proprietor of a trade may assign the trade mark. The assignment may be recorded on the Register.

To assign a certification mark, the consent of a court is required.

Licensing / Registered users

Licensing of a mark is permitted. Any licence contract must provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used, where such control is appropriate or necessary. If there is no provision for control or quality control is not effectively exercised, the licence contract is not valid.

A registered collective mark or an application for the registration of a collective mark may not be the subject of a licensing contract.

Amendments

The registered proprietor of a trade mark may apply to the Registrar for leave to add to or alter the trade mark in a manner not substantially affecting the identity thereof. Such amendment is at the Registrar’s discretion.

Rights conferred by registration

The registration of a trade mark prevents any unauthorised person from using, in the course of trade, any sign that is identical with or similar to the registered mark, for goods or services that are identical with or similar to the goods or services in respect of which the mark is registered, where such use would result in a likelihood of confusion.

Infringement proceedings may not, however, be initiated before the date on which the mark is in fact registered.

Trade mark infringement

 The registration of a mark shall grant the owner of the registered mark the exclusive right to prevent any unauthorised person from using, in the course of trade, any sign that is identical with or similar to the registered mark, for goods or services that are identical with or similar to the goods or services in respect of which the mark is registered, where such use would result in a likelihood of confusion. A likelihood of confusion is presumed in the case of use of an identical sign for identical goods or services.

The owner of a registered well-known mark has the exclusive right to prevent any unauthorised third party from using, in the course of trade, any sign that is identical with or similar to the registered well-known mark for goods or services that are dissimilar to the goods or services for which the registered well-known mark is used where such use would indicate a connection between the goods or services for which it is used and the owner of the registered well-known mark, and where the interests of the owner of the registered well-known mark are likely to be damaged by such use.

The Industrial Property Act provides that, in addition to any other rights or remedies which may be available, the registered owner of a mark shall have the right to institute proceedings against a person who infringes the trade mark by using, without his or her agreement, the mark as aforesaid or who performs acts which make it likely that infringement will occur.

The Industrial Property Act also affords protection to well-known unregistered marks, in that the owner of an unregistered mark that is well-known in Seychelles has the exclusive right to prevent any unauthorised person from using, in the course of trade, any sign identical with or similar to the unregistered well-known mark for goods and services that are identical with or similar to the goods or services for which the unregistered well-known mark is used, provided that such use is likely to confuse the public.

It must be noted that there is express provision in the Industrial Property Act that any civil proceedings must be initiated within 5 years from the date on which the rights holder knew or had reasons to know of the infringing acts, except in the case of infringing use of distinctive signs in bad faith or for unfair competition purposes, for which there is no time limit to initiate proceedings.

Defences to trade mark infringement

The rights conferred by registration of a mark shall not:

Extend to acts in respect of articles which have been put on the market in or outside of Seychelles by the registered owner or any other person with his or her consent

Confer upon its owner the right to preclude third parties from using the registered mark for information purposes, such as sales promotion or comparative advertising, provided such use is not of such a nature as to deceive the public or does not constitute unfair competition, or

Confer upon its owner the right to preclude third parties from bona fide use of their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, time of production or supply of their goods or services, insofar as such use is confined to the purpose of mere identification or information and cannot mislead the public as to the source of the goods or services.

Relief for trade mark infringement

The Industrial Property Act provides for provisional measures, civil and criminal remedies.

The Court is empowered to order provisional measures to prevent an infringement of a right from occurring and to preserve evidence in regard to the alleged infringement.

The Act also empowers the Court to award damages in circumstances where the infringer knowingly, or with reasonable grounds to know, engaged in the infringing activity.

The Court may also order the disposal of goods, materials or implements the predominant use of which has been in the creation of the infringing goods.

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