On 24 October 2018, the notice of commencement in respect of the Trademarks Act No 2 of 2018 (“the New Act”), was published in the Malawi Gazette Supplement. In terms of the notice, the New Act came into operation on 1 October 2018. The provisions of the new Act, it appears, will apply retroactively.
The new Act provides for, inter alia, the registration of:
- service marks;
- collective marks; and
- geographical indications.
- In addition, it includes an expanded definition of “trademark”, which makes it possible to register non-traditional marks, such as: non-visual signs or any sign or mark that is sufficiently described in a clear, precise, intelligible and objective manner.
In terms of the new Act, it is compulsory to file a declaration of intention to use at the time of filing an application. We suggest that all new applications be accompanied by a declaration of intention to use, in order to avoid problems when filing an application.
It is important note that, in terms of The New Act, a notice of opposition must be filed within 30 days of the advertisement of a trade mark application. The New Act also provides for additional grounds of opposition, including that the mark applied for may not be misleading as to geographical origin, may not consist of the common name of goods or services or be identical to, or contain, armorial bearings, flags or other emblems. It is now also possible to oppose the registration of a mark based on a registered or unregistered well-known trade mark.
No new regulations setting out the procedure to deal with applications for service marks, collective marks, geographical indications and non-traditional marks have been promulgated yet. Therefore, how these applications will be dealt with, in practice, remains to be seen. In the interim, the current regulations to the previous Act (Trademarks Act 1957) will continue to apply.
Click here for more information regarding additional specifics of the new Act. For further queries regarding the prosecution and enforcement of IP rights in Malawi, please e-mail firstname.lastname@example.org
This notice prepared by
Thembani Nkabinde | Candidate Attorney
Mohamed Jameel Hamid | Associate