On 31 January 2022, the previously promulgated Industrial Property Act, 2019 was proclaimed and came into force in Mauritius. The Industrial Property Regulations 2022, made under the Act, also came into force on 31 January 2022.
The Industrial Property Act, 2019 is now a combined Act covering all industrial property related issues in one Act, including patents, designs, utility models, trademarks, geographical and plant varieties and repeals the following Acts:
- The Geographical Indications Act;
- The Layout Designs (Topographies) of Integrated Circuits Act; and
- The Patents, Industrial Designs and Trademarks Act, 2002.
Notable developments with the new Act, relating to trade marks, are:
- the change in the definition of a mark to:
“(a) means a visually perceptible sign or combination of signs, capable of distinguishing the goods or services of an enterprise from those of other enterprises; and
(b) includes –
(i) a certification mark and a collective mark; and
(ii) words, letters, numerals, figures, pictures, a combination of colours, the shape of goods or parts of goods, or the packaging or other conditioning of goods”
Changes with the definition bring about the recognition of a certification mark, colour and shape marks, as well as expressly recognizing packaging as a mark.
- The Regulations specify the types of marks as wordmark, figurative mark, shape mark, position mark and a colour mark, which can consist of only one colour or a combination of colours;
- Protection of Geographical Indications (GI);
- Trade mark filing via the Madrid Protocol, as well as detailed provisions relating to, inter alia, ex officio provisional refusal and provisional refusal on the basis of an opposition, as well as granting of protection. There is also provision for publication of international applications designating Mauritius in the Mauritian Gazette. Mauritius has not yet acceded to the Madrid Protocol and although we understand that steps are underway for accession, this could still take several months;
- Honest Concurrent User permitted;
- Registration of Certification trademarks;
- Division of applications permitted;
- 6 months renewal grace period;
- Recordal and publication of licenses;
- An increase in official fees;
- Whilst it was previously possible to appeal almost any decision of the Director to the Industrial Property Tribunal, the jurisdiction of the Industrial Property Tribunal now specifically allows for an appeal relating to the rejection of an application for a certificate, the rejection of an opposition to the registration of an industrial property; and an application by any interested person, for the invalidation of, inter alia, a mark or geographical indication. It is noted, however, that the Regulations refer to a request for removal on the ground of non-use and for cancellation to be made to the Director;
- Separate absolute grounds for refusal of a mark from relative grounds of refusal, based on third party rights;
- Absolute grounds of refusal now include the mark being devoid of any distinctive character; the mark consisting solely of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of goods or of rendering of services, or other characteristics of goods or services; the mark consisting solely of a sign or indication that has become generic in current language or in the bona fide established practices of the trade, or is a usual or recognized technical or scientific name of a product or service; consists solely of a shape that results from the nature of the goods or provides a technical result, functional advantage or substantial value to the goods;
- In addition to a prior registration and well-known rights, relative grounds of refusal now include the general ground that “the mark cannot be used in Mauritius by virtue of any law” and allow for opposition on the basis of prior use only (absent a registration or pending application) and where evidence of prior use is submitted;
- The grounds for invalidation of the registration of a mark have been expanded to include invalidation on the basis of the registration being contrary to the definition of a ‘mark’ and being contrary to relative grounds of refusal.
The 2019 Act introduces provisions relating to the protection of Plant Varieties and Utility Models
which were not protected under the previous legislation.
Quite surprisingly, the Act also includes provisions for protection for designs registered via the
Hague Agreement and Patents via the Patent Co-Operation Treaty (PCT) despite the fact that more
than 2 years after its Promulgation, Mauritius is still not a member of the Hague Agreement or the
Finally, the Regulations include increases to the official fees payable for all IP matters and, much to
the relief of patent owners, now makes provision for the restoration of a patent which was removed
from the register due to non-payment of renewal fees.