Trademarks

What is a trade mark

A trade mark is a sign, symbol or a business identity which helps businesses to distinguish/differentiate between goods or services of one business/undertaking from those of the others. A trade mark may consist of a device, label, name, signature, word, letter, numeral or any combination thereof or a container for goods.

Why is it important to have a trade mark

  • Trademarks are used to distinguish products and services of one company from those of the others in the same industry.
  • Trademarks are used to identify origins of similar products easily in the market.
  • Trademarks are used as a marketing tool.

Why register a trade mark

  • To seal protection or to ensure that your trade mark is protected.
  • Once a trade mark is registered, this registration forms the basis of objections by the Registrar to the registration of the same or confusingly similar trade mark for the same goods/services by others.
  • Acts as a deterrent or deters potential infringers.
  • A Namibian registered trademark is only applicable to Namibia as trademarks registration/protection is territorial. Applicants wanting to have protection in other jurisdictions can opt for the Banjul Protocol (ARIPO) route or the Madrid system (WIPO route).

Requirements for registration of a trade mark:

  • A trade mark must be distinctive, meaning it must distinguish itself or be fit enough to differentiate goods/services of the business it represents from those of other businesses in the same industry or beyond.
  • A trade mark must not be laudatory/self praising e.g. first class…, best quality….., top quality……, best ever etc.
  • A trade mark must not consist of offensive, derogatory, immoral or confusing elements/phrases or any words perceived to be an insult in some cultures/believes/communities/traditions etc.
  • It must also not be identical or confusingly similar to an already registered trade mark by another applicant in respect of similar goods/services.
  • A trade mark should not consist of code of arms, seal or national flags or any indication of State patronage.

Procedures and Steps for registration of trade mark:

  • First and foremost, it is advisable for applicants of trade marks to conduct a trade marks similarity search on the trade mark data base just to confirm availability of the mark intending to apply for.
  • Once certain that the trade mark is indeed available, the applicant must obtain a Trade Mark Application form (referred to as Form SM 1) from the IP Office, and all MTI Regional Office.

Steps on how to Complete the Trade Mark Application Form (Form SM 1):

  • Next to Particular of trademark: Write your trademark or paste a representation of your mark (in case of logos or combination of logos and wordings)
  • Part: Write capital “A”
  • Class: Choose the class from the list of classes attached (one class per form) which best describes goods/services you intend to offer with your trademark.
  • Specification of goods/services: Write the goods/services you intend offering with the trade mark but only as per the chosen class. Even if wordings might not be the same as listed under the chosen class, let the goods/services relates to the chosen class (strictly adhere).
  • I/We: Write your company name or your own name if you do not have an existing company name jet.
  • a: Write Namibian
  • company of: Write the business physical address/or your own personal residential address or address of the place were business is conducted from depending on whether the applicant is an individual or a company
  • Address for service: Name of the applicant being an individual or company or Name of Legal representatives in case applying through law firms and Postal details of the law firm or the individual applicant
  • Signature of applicant: Self explanatory
  • After the dotted lines Acknowledgement of Application: Next to Name of applicant: Write in the applicants name again being company name or individual name
  • Particular of Trademark: Write your trademark and if it’s a combination of words and logos or even logo only just write a short description of your mark (This helps the capturers when receiving your mark on the Trade mark Database (IPAS) system because it must be entered by description)
  • Address for service: Name of the applicant being an individual or company or Name of Legal representatives in case applying through law firms and Postal details of the law firm or the individual applicant
  • After completion of the form, buy N$260,00 Revenue Stamps (application fees) and affix them on the top right side of the form
  • In case your trade mark is in the form of an emblem/logo or a combination of emblem/logo and wordings, kindly attach four/4 copies of the representation of the mark to the completed trade mark application form
  • Finally make 2 copies from the completed trade mark application before submission to the Trade Mark Office.

The Process after lodging the application until registration:

  • Once a trade mark is received in the Industrial Property Office, firstly it’s being captured or received on the Trade mark Database (IPAS). During capturing, the system or the database generates a unique number reflecting the year in which this trade mark is received followed by a four digit sequentially allocated. This important exercise is then followed by forwarding of this marks to the examiners for examinations.   The trade mark is then being examined by the examiners (officials in the IP Office) where it’s being checked whether it complies with the requirements for trade mark registration.
  • Examiners produce examination report and forward it to the applicants directly or through their legal representatives or IP agents.
  • Once examiners receives responses from the applicants directly or from their legal representatives (IP agents), examiners then prepare and issue out a document called Preliminary Notice of Acceptance which allows the trade mark to be advertised in the Government Gazette by the applicant or by his/her legal representatives (IP agents).
  • After advertisement of the concerned trade mark in the Government Gazette, the applicant directly or through IP agents is obliged to inform the examiners (IP Officials) about the gazette date in which his/her mark was advertised. It is crucially important for the examiner to receive this information (gazette date) in order to accurately calculate the two months possible opposition period.
  • Once a trade mark is advertised in the Government Gazette, it is open for possible opposition/objection by any for a period of two months.
  • Once the two months opposition period is over and the advertised trade mark is unchallenged on any grounds for opposition, the examiner will then GRANT PROTECTION by issuance of the Registration Certificate to the applicant or through his/her IP agents and if opposed it goes through opposition proceedings as stipulated in the Trade mark Act No. 48 of 1973.

Maintenance before registration of a trade mark:

  • This involves any alteration the applicant directly or through IP agents may want to bring or to be effected on the submitted trade mark application in its pending status e.g. change of the physical or postal address of the applicant or their IP agents, alteration of goods/services for which this particular trade mark was applied for as well as the alteration of the trade mark itself.
  • IP Officials ensures that all these changes are effected in the trade mark register as per request that came through from the applicant or his/her IP agent.

Maintenance after registration

  • This involves renewal of the trade mark on or before expiration (after ten years).
  • This also involves any alteration the applicant directly or through IP agents may want to bring or to be effected on the submitted trade mark application in its granted/registered/protected status e.g. change of the physical or postal address of the applicant or their IP agents, amendment of goods/services for which this particular trade mark was applied for as well as the amendment of the trade mark itself.
  • Some other requests that at times comes through are in instances were applicants lose interest in their trade marks and as a result thereof request for cancellation, abandonment, withdrawal of their marks.
  • In cases of failures by the applicant to renew their trade marks on or before expiration date, IP Officials are obliged in accordance with provisions in the Trade marks Act No. 48 of 1973 to REMOVE concerned marks from the Trade mark Register.

 

 

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