Essential Information Regarding Trademark Applications in Namibia
Madrid Protocol member: Yes, Namibia is a signatory to the Madrid Agreement.
Paris Convention signatory: Yes, Namibia is a signatory to the Paris Convention.
ARIPO member: Yes, trademark applicants may designate Namibia in an ARIPO intellectual property application.
OAPI member: No, trademark applicants may not designate Namibia in an OAPI intellectual property application.
Renewal term: The renewal period for registered trademarks in Namibia is 10 years.
Non-use period: The non-use period for registered trademarks in Namibia is a continuous 3 year period.
Opposition period: The opposition period for pending trademark applications in Namibia is 2 months.
First-to-file jurisdiction: Yes, Namibia is a first to file jurisdiction.
Priority claim: Yes, trademark applicants may claim priority for a trademark application in Namibia, provided that prior filing occurred in a jurisdiction that is also a signatory to the Paris Convention.
Application-to-Registration term: Provided there are no issues with the application, the approximate period from trademark application to registration in Namibia takes 12 months.
Power of Attorney: Applicants are required to complete a signed power of attorney document to successfully have an agent file a trademark application on your behalf in Namibia. It is important to note that such power of attorney must be executed by the applicant by way of manuscript signature. In this instance, a power of attorney executed via electronic signature is not admissable.
Do you have a few minutes to spare? Great!
Let's continue our African Trademark Cheatsheet series by spotlighting another one of our neighbouring countries, Namibia. Affectionately known as the Land of the Brave, Namibia is celebrated for its ethereal desert landscapes, majestic wildlife and serene ambience. Today, Namibia stands out as an enticing option to investors looking to expand their reach into Africa due to its stable economic conditions, robust regulatory framework, and wealth of mineral resources.
Much like Mozambique, whose prosecutorial landscape we unpacked in the previous edition of this series, Nambia is a member state of both the global Madrid and regional ARIPO intellectual property systems. This means that there are three paths to securing trademark rights in the Namibian market.
Trademark prosecution is governed by The Industrial Property Act, 2012 which caters for all three systems of intellectual property protection. The first option is to seek international IP protection through the Madrid Protocol, a global system with member states across multiple continents. Administered by WIPO, the Madrid Protocol expedites the registration of intellectual property in numerous member states through the filing of a singular application. Alternatively, individuals can opt for regional trademark protection in Namibia via the Banjul Protocol under the ARIPO system. Much like the Madrid system, ARIPO (African Regional Intellectual Property Organisation) facilitates trademark filing and registration across multiple African markets through a single application. The final avenue to acquiring trademark protection in Namibia is through pursuing national trademark rights, which confer exclusive trademark rights solely within the Namibian market.
Both individuals and legal entities are eligible to register trademark rights in Namibia. However, any foreign individuals or organisations would need a local agent to represent their interests throughout the process. Aspirant trademark holders can register a mark in Namibia in all of the major categories of trademark rights, except for any marks that are; deceptive, contrary to the good morals of society, or a laudatory or customary term, among other exclusions.
Given the presence of three distinct paths for safeguarding trademark rights within Namibia, it follows that each framework for trademark protection will entail its own distinct set of prerequisites and procedural steps. Trademark applications handled under the ARIPO and Madrid systems undergo adjudication through standardised procedures, a topic we'll delve into further in forthcoming instalments of the series. Today, however, we will spotlight the national trademark prosecution system in Namibia, and unpack what you, as an applicant or agent, can expect during the process.
Trademark Application Process in Namibia
The national trademark application process begins with the completion and submission of a TM1 form to BIPA (Business and Intellectual Property Authority). This form will include various information, such as a specification of the goods and services which the mark represents, the intended Nice classifications being pursued in the application and the relevant particulars of the applicant and agent. This application must be submitted to BIPA along with the prescribed application fee, ten copies of a representation of the mark and a copy of the priority document, should the applicant wish to claim priority in this market. Once the application has been successfully received by the BIPA, it is inputted into the Trademarks Database (IPAS), which generates a unique identifying code for each application.
Following this step, the mark will then proceed to the examination stage, where examiners at BIPA will assess the compliance and suitability of the mark for registration. Once completed, the examiners will generate an examination report, which will be sent to the applicant or agent for their knowledge. It is then incumbent on the agent or applicant, if possible in terms of the findings, to favourably respond to this report within 30 days of its issuance for the mark to proceed to the next stage in the application process. Following successful completion of this step, BIPA will proceed to prepare a Preliminary Notice of Acceptance.
Succeeding the issuance of this notice, the mark will proceed to advertisement in the national Industrial Property Bulletin, where it is subject to opposition by interested parties for a period of two months; calculated from the date publication. Unique to other trademark prosecution protocols that we have discussed in this series, in Namibia, applicants or their agent firms are required to inform the examiners at the BIPA of the date on which their mark was initially advertised in the Industrial Property Bulletin. BIPA does not register this date on your behalf. In the event that an interested party launches an official objection to the registration of the mark during the advertisement period, official opposition proceedings will commence in terms of the protocol set out in the governing legislation, the Industrial Property Act, 2012. In the ideal event that the mark emerges from the advertisement stage uncontested, it will proceed to registration.
Applicants can expect to receive an official certificate of registration from BIPA in the months following successful registration. Following registration, it is imperative that applicants keep abreast of their trademark renewal fees which are due every ten years. Should applicants fail to do so, their mark will be removed from the national trademarks per the relevant provisions of the governing legislation.
Trademark Assignment Process in Namibia
If Namibian trademark holders wish to update the ownership details of their mark, they must participate in the local trademark assignment process. Much like other jurisdictions, this can be achieved relatively efficiently through the execution of a deed of assignment document that is accompanied by a power of attorney document duly completed by the trademark holder. This application should be submitted to the BIPA offices with the prescribed fee in order for the governing body to update the details of ownership on the trademark registry.
Did you find our discussion of trademark prosecution in Namibia insightful? We hope that you did! We look forward to seeing the continued expansion of the intellectual property landscape in this key African market.
If you would like to know more about trademark prosecution in Namibia and other African territories, please feel free to reach out to our IP Prosecutions team at info@debeerattorneys.com and we will be in contact with you as soon as we can.
PS: If you would like to explore previous instalments of this series that discuss trademark prosecution in other African markets, no problem! Simply click the relevant link below to access the information that you'd like:
Totsiens and sala kakuhle!
This information was last updated on 5 June 2024. This information is for general educational and entertainment purposes and is subject to change at any time.