Published: 2000-01-01
Key Benefits:
74. Acquisition of exclusive right to mark
(1) The exclusive right to a mark under this Act shall be acquired by registration in accordance with the provisions under this Part.
(2) A mark shall not be registered if it is-
(a) incapable of distinguishing the goods or services of one enterprise or business from those of another enterprise or business;
(b) contrary to public order or morality;
(c) likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned, or their nature or characteristics;
(d) a mark that consists exclusively of a sign or indication which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(e) a mark that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade in respect of the goods or services for which it is to be registered;
(f) a sign that consists exclusively of-
(i) the shape which results from the nature of the goods themselves,
(ii) the shape of goods which is necessary to obtain a technical result, or
(iii) the shape which gives substantial inherent value to the goods;
(g) identical to, or is an imitation of, or contains, as an element, an armorial bearing, flag or other emblem, a name, abbreviation or initials of, or official sign or hallmark adopted by, any State, inter-governmental organisation or organisation created by an international convention, unless the competent authority of that State or organisation has given authorisation for such bearing, flag, emblem, name, abbreviation or initials, official sign or hallmark to be used by an applicant for a registered mark;
(h) identical to, or confusingly similar to, or constitutes an imitation, a translation or a transliteration of, a mark or trade name which is well known in Botswana for identical or similar goods or services of another enterprise, or if it is well known in Botswana for goods or services which are not identical or similar to those in respect of which registration is applied for;
(i) identical to, confusingly similar to, or constitutes a translation or a transliteration of a geographical indication used to designate or distinguish the same goods for which the mark is to be used, or to designate different goods where the use of that mark would pose a risk of misleading the public as to the origin of the goods or services designated by the mark; or
(j) identical to a mark belonging to a different owner of a registered mark and already on the register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
(3) For purposes of subsection (2) (h)-
(a) the use of the mark in relation to those goods or services should indicate a connection between those goods or services and the owner of the well known mark;
(b) the interests of the owner of the well known mark shall not be prejudiced by such use; and
(c) whether that mark is well known in Botswana, due regard shall be given to the knowledge of the mark in the relevant sector of the public, including knowledge which has been attained as a result of the promotion of the mark.
Where a mark has been registered in good faith, or where rights in the mark have been acquired through use in good faith either before 1st January, 2000, or before the geographical indication is protected in Botswana, nothing in this Act shall prevent the registration of such mark or interfere with the use of such mark on the basis that the mark is identical to, or similar to, a geographical indication.
76. Application for registration of mark
(1) An application for the registration of a mark, accompanied by such fee as may be prescribed, shall be made to the Registrar in the prescribed manner and shall contain the following-
(a) a request, in writing, that the mark be registered;
(b) one or more reproductions of the mark;
(c) a list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification; and
(d) other requirements as may be prescribed by regulations.
(2) The provisions of section 17 in respect of the right of priority shall apply.
(3) The applicant may, at any time before his or her mark is registered, withdraw his or her application.
77. Filing date of application for registration of mark
The filing date of an application for the registration of a mark shall be the date on which the application is received by the Office containing the following indications and elements, as prescribed-
(a) an express or implicit indication that the registration of a mark is sought;
(b) indications allowing the identity of the applicant to be established;
(c) indications allowing the applicant or its representative, if any, to be contacted by the Office;
(d) a sufficiently clear representation of the mark whose registration is sought; and
(e) a list of the goods or services for which the registration is sought.
78. Examination of application for registration of mark
(1) The Registrar shall examine the application to determine whether it complies with the requirements of section 77 and any other requirements as may be prescribed.
(2) The Registrar shall also determine whether the mark complies with the definition of a mark under this Act, and whether it complies with the requirements of paragraphs (a) to (i) of section 74 (2).
(3) The Registrar shall, if he or she is satisfied that the application complies with the requirements of the provisions of this section, accept the application and shall, within such time and in such manner as may be prescribed, publish that application in the Journal subject to the payment of a prescribed publication fee.
79. Opposition to registration of mark
(1) Any person may, on the grounds specified in section 74 (2), or on grounds that the mark does not comply with the definition of a mark as specified in this Act, give to the Registrar within such period and in such manner as may be prescribed, notice of his or her opposition to the registration of a mark.
(2) The Registrar shall, as soon as he or she receives such notice, send a copy to the applicant who shall, within such period and in such manner as may be prescribed, submit, to the Registrar, his or her written response (referred to in this section as a "counter- statement") specifying the grounds on which he or she relies for his or her application.
(3) Where the applicant files his or her counter-statement, the Registrar shall furnish a copy to the person opposing and shall hear the parties, if either wishes to be heard.
(4) Following the publication of an application, and until the registration of the mark, the applicant shall have the same rights and privileges as he or she would have if the mark had been registered, but it shall be a valid defence to an action brought hereunder in respect of an act done after the application was published, if the defendant establishes that the mark could not have been validly registered at the time the act was done.
(1) Where having considered the merits of any opposition and any counter-statement thereto, the Registrar is satisfied that the application for the registration of a mark satisfies the requirements of this Act, the Registrar shall-
(a) register the mark in the appropriate register;
(b) issue, to the applicant, a certificate of registration; and
(c) publish, in the Journal, a reference to the registration of the mark.
(2) Where the requirements for the registration of a mark are not satisfied, or an application for the registration of a mark has been successfully opposed, the Registrar shall refuse to register that mark.
81. Rights conferred by registration
(1) Registration of a mark shall confer on the registered owner, the right-
(a) to exclusive ownership of that mark;
(b) to prohibit third parties from using the mark; and
(c) to institute court proceedings against any person infringing his or her rights.
(2) A person who, without authorisation from the owner of a registered mark-
(a) affixes the registered mark or a similar distinctive sign on goods for which the mark has been registered, on goods associated with the services for which the mark has been registered or on containers, wrapping or packaging of such goods;
(b) suppresses or distorts the mark after it has been affixed on the goods for which the mark has been registered for commercial purposes;
(c) produces, sells, offers for sale, distributes or stocks labels, containers, wrapping, packaging or any other material on which the mark is reproduced;
(d) refills or re-uses for commercial purposes, labels, containers, wrapping, packaging or any other material bearing the mark;
(e) uses in the course of trade, a sign that is identical or similar to the mark in respect of any goods or services, where such use may cause a risk of confusion or association with the registered mark;
(f) uses in the course of trade, a sign identical or similar to the mark in respect of any goods or services where such use may cause unfair economic prejudice to the registered owner through dilution of the distinctive character or advertising value of the mark, or an unfair advantage being taken from the reputation of the registered mark or of its holder; or
(g) for non-commercial purposes, uses a sign identical or similar to the mark, where this may cause dilution of the distinctive character or advertising value of the mark, or an unfair advantage being taken of the reputation of the mark or of its holder,
infringes the rights of the owner of the registered mark.
(3) The following acts, in particular, shall constitute use of a mark in the course of trade-
(a) introducing in the market, selling, offering for sale or distributing goods or services with the mark or with reference to the mark;
(b) importing, exporting, storing or transporting goods that bear the mark or refer to the mark;
(c) use of the mark in advertising, publications, commercial documents, written or oral communication, irrespective of the means of communication used;
(d) use of the mark on the internet or other electronic communication media or networks open to the public, where the use is intended for Botswana or has a commercial market in Botswana;
(e) adoption or use of the mark as part of a domain name or other similar identification or designation on the internet or other electronic communication media or networks open to the public; and
(f) the acts mentioned under paragraphs (a) and (b) performed in respect of labels, tags, packaging or wrapping material and similar products that reproduce or bear the mark.
(4) The provisions of section 74 (2) (h) shall apply in any action instituted by the owner of a well known mark against any person in respect of the unlawful use of that mark.
82. Exceptions to rights conferred by registration
(1) The rights conferred by registration of a mark may not be invoked to prevent a third party from using, in the course of trade-
(a) his or her name or address, or that of his or her trading establishment;
(b) the mark on goods lawfully bearing that mark after the goods have been put in the market in Botswana or abroad by the registered holder or by a person acting with the holder's consent or having an economic tie to the holder where the goods and the packaging or wrapping in direct contact with the goods has not deteriorated or been altered;
(c) bona fide indications or information on characteristics of the goods or services produced or marketed by that person, in particular, those referring to quantity, quality, use, geographical origin or price of the goods or services;
(d) a geographical indication registered under this Act;
(e) bona fide indications or information on the availability, use, application or compatibility of the goods or services produced or distributed by that person, in particular in relation to spare parts, replacements or accessories if the registered mark is used in good faith to perform legitimate industrial or commercial activities, and is not likely to cause confusion or association in respect of the commercial source of the goods or services.
(2) For the purposes of subsection (1) (b), an economic tie shall exist where one of two persons or more involved may exercise directly or indirectly on the other, a decisive influence with respect to the use of the mark, or where a third party may exercise such an influence on both persons.
(3) Where a mark consists of a sign composed of several elements, protection shall not extend to the elements that are merely descriptive or are of common or necessary use for the purposes of trade.
83. Proceedings for infringement of mark
(1) The owner of a mark shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person who infringes the mark by using that mark without his or her authorisation or by performing acts which make it likely that infringement will occur.
(2) The right conferred under this section shall extend to the use of a sign similar to the registered mark in relation to goods and services similar to those for which the mark has been registered, where confusion may arise in the public.
(3) The right conferred under this section shall extend to the use of a sign which constitutes a reproduction, an imitation or a translation of a registered mark which is well known in Botswana in relation to goods or services which are not similar to those in respect of which a mark is registered where-
(a) use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark; and
(b) the interests of the owner of the registered mark are likely to be prejudiced by such use.
(4) A plaintiff in proceedings for infringement shall be entitled to relief by way of an interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part, damages or an account of the profits derived from the infringement.
(5) The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.
84. Transfer of rights in mark
The rights in a mark may be transferred by cession, assignment, testamentary disposition or by operation of law.
85. Duration and renewal of registration of mark
(1) The registration in respect of a mark shall expire 10 years after the filing date of the application for its registration, but may, upon the written request and payment of the prescribed renewal fee, be renewed for consecutive periods of 10 years.
(2) Where the owner of a registered mark is late in paying the renewal fee, the Registrar shall, upon payment of such surcharge as may be prescribed, give him or her a period of grace of six months within which he or she must pay the late renewal fee.
(3) The rights of a registered owner shall lapse immediately after the expiry of the six months grace period.
86. Invalidation of registration of mark
(1) Any interested person may apply to the Registrar for the invalidation of the registration of a mark on the grounds specified in section 74 (2) or on the grounds that the definition of a mark as specified under this Act has not been satisfied.
(2) An application for the invalidation of a registration of a mark shall be served on the owner of the mark in the prescribed manner.
(3) Any invalidation of the registration of a mark shall be deemed to have been effective from the date of registration of the mark and a reference thereto shall be published by the Registrar in the Journal as soon as possible.
87. Removal of mark on grounds of non-use
(1) Any interested person may make an application to the Registrar to remove, from the register, a mark in respect of any of the goods or services in respect of which it is registered on the ground that up to one month prior to filing the application, the mark had, after its registration, not been used in Botswana by the registered owner or a licensee during a continuous period of three or more years.
(2) The Registrar shall not remove a mark from the register if the owner of the mark shows that circumstances existed which prevented the use of the mark and that there was no intention not to use the mark in respect of those goods or services, or that there was no intention to abandon the use of the mark in respect of the said goods or services.
(3) An application for the removal of a mark from the register of marks shall be served on the owner and filed with the Registrar in the manner and within the time prescribed.
88. Reinstatement of lapsed mark rights
(1) An owner of a mark who loses rights on the mark under section 85 or 87 may apply, within two months, to the Registrar for the reinstatement of his or her rights on the mark, giving reasons.
(2) The Registrar may reinstate the rights of the owner of the mark where it emerges that failure to comply with the time limit occurred regardless of due care as required by the circumstances having been taken, subject to payment of a re-instatement fee.
A mark in respect of which Botswana is a designated State, registered by ARIPO by virtue of the Banjul Protocol, shall have the same effect and enjoy the same protection in Botswana as a mark registered under this Act unless the Registrar communicates to ARIPO, in respect of the application therefor, a decision, in accordance with the provisions of that Protocol, that if a mark is registered by ARIPO, that mark shall have no effect in Botswana.
(1) Subject to subsections (2) and (3), sections 74 to 87 of this Act shall apply to collective marks, except that references therein to a mark shall be read as being references to a collective mark.
(2) An application for the registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the rules governing the use of the collective mark.
(3) For purposes of subsection (2), "rules" means the rules made by the person under whose control the collective mark may be used.
(4) The registered owner of a collective mark shall notify the Registrar, in writing, of any changes made in respect of the rules referred to in subsection (2).
91. Invalidation of registration of collective mark
(1) In addition to the grounds set out in section 86 (1), the Registrar shall invalidate the registration of a collective mark if the person requesting the invalidation proves that only the registered owner uses the mark, or that he or she uses or permits its use incontravention of the rules referred to in section 90 (2), or that he or she uses or permits its use in a manner which is liable to deceive those in the trade or the public as to the origin or any other common characteristics of the goods or services concerned.
(2) An application for the invalidation of a collective mark shall be served on the owner of the mark in the manner and within the time prescribed.
92. Licensing of marks and collective marks
(1) Any licence contract made in relation to a mark shall provide for the effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used.
(2) If the licence contract does not provide for quality control referred to in subsection (1), or if the quality control is not effectively carried out, the licence contract may be declared invalid or non-enforceable by the court.
(3) The registration of a collective mark, or an application therefor, may not be the subject of a licence contract.
(4) A licence holder shall apply, in the prescribed manner and subject to the payment of the prescribed fee, to the Registrar to record, on the register, details about the licence contract made under subsection (1) and for such purpose the Registrar shall not require submission of the licence contract or a translation thereof, nor any indication of the financial terms of the contract.
(5) A single request shall be sufficient to record a licence in respect of more than one registered mark if the registration numbers of all registrations concerned are indicated in the request, the holder of the marks and the licensee are the same for all registrations, and the request indicates, as prescribed, the scope of the licence with respect to all the registrations.
(6) Failure to record a licence at the Office shall not affect the validity of the registration of the mark that is the subject of the licence, or the rights granted by that registration.
(7) Recording of a licence by the Office shall not be required as a condition for any right that the licensee may have to join infringement proceedings initiated by the holder of the registration or to obtain, by way of such proceedings, damages resulting from an infringement of the mark which is the subject of the licence.
(8) Where the use of a mark by a licensee is deemed to constitute any use by the holder of the registration in any proceedings relating to the acquisition, maintenance or enforcement of rights in a mark, the recording of the licence shall not be required as a condition for such use to be recognised.
(1) A name or designation may not be used as a trade name if by its nature or the use to which it may be put, it is contrary to public order or morality and if, in particular, it is liable to deceive those in the trade or the public as to the nature of the enterprise identified by that name.
(2) Notwithstanding any law providing for any obligation to register a trade name, such name shall be protected, even prior to or without registration, against any unlawful act committed by a third party.
(3) Any subsequent use of the trade name by a third party, whether as a trade name, a mark or a collective mark, or any such use of a similar trade name or mark, which is likely to mislead the public, shall be deemed to be unlawful.
