Marks Designating Botswana under the Madrid System Published

The Registrar of the Botswana Trade Mark Office has commenced the arduous task of publishing the marks filed and designated to Botswana under the Madrid System. The publication of the first batch of the applications has appeared in the Botswana Trade Mark Journal Volume 17 Issue 2, dated the 31st of May 2016.

The Madrid system is an international registration system administered by WIPO through the international Bureau. Once an applicant for registration under the Madrid system has filed their application designating the countries in which they seek protection it is accepted and registered by International Bureau. The bureau then sends details of the registration to the national trade mark offices (NTO) of all the states designated in the application. The Bureau then sends a certificate of registration to the applicant and publishes the registration in the WIPO Gazette of International Marks.

The certificate of registration issued by WIPO constitutes no more than confirmation of a pending application in each of the designated countries. The applicant should not assume ownership of valid trade mark rights in the designated countries mentioned on the certificate. International registrations consequently cannot serve as a basis for an action for trade mark infringement prior to the completion of the registration procedure in the national trade mark offices.

The national offices examine each Madrid application in accordance with their national laws and any office raising an objection to registration must send a provisional refusal to the International Bureau. The Provisional refusal is then forwarded to the applicant or his representative who must then continue the process with the national trade mark office locally. If no objections are raised, the marks are then published for opposition purposes by the national trade mark office.

As the Registrar of the Botswana Trade Mark Office has recently published the marks, we can assume that the marks are open to opposition. The opposition period in Botswana is 90 days after the marks have been published. The terms for filing oppositions can be different in each designated country and the grounds of opposition are those which can be raised in opposition to a national registration in the country concerned.

It must be noted,that at the beginning of the year the Companies and Intellectual Property Authority (CIPA) of Botswana issued a notice on the processing and handling of trade mark opposition hearings, stating that was unable to conduct hearings for trademark oppositions until further notice, more details can be found here. We are at this point advised that the registrar is still in the process of setting up a hearing tribunal which will be hearing all oppositions. Persons who believe that their propriety rights have been infringed should take the cautionary approach and file notices of opposition, so that when the tribunal is set up the matters will be in line to be heard.

For more information kindly contact Carole Theuri .