Trade and Service Marks
– Industrial Property Act No. 8 of 2010, in force since August 31, 2012.
– Industrial Property Regulations, Statutory Instrument No. 69 of 2012.
Note: the new Act has resulted in a number of substantial changes to Trademark Law in Botswana including the protection of international registrations and geographical indications.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 1966.
– WTO’s TRIPS Agreement, since May 31, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 15, 1998.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 15, 1998.
– ARIPO, Banjul Protocol on Marks, since October 29, 2003.
– Madrid Protocol, since December 5, 2006.
Filing, Examination, Protection
Applicant: the application form calls for the usual information concerning the applicant’s full name, citizenship or state of incorporation and address.
Service and collective marks: permitted.
Trade names, well-known marks, color marks and three-dimensional marks: protectable.
Series and defensive marks: not permitted.
Geographical indications: permitted and means an indication or sign which identifies goods as originating in the territory of a country or a region or locality in a country where a quality, reputation or other characteristic of the goods is essentially attributable to that geographical origin.
Essential particulars for registrability: a registrable mark is any visible sign capable of distinguishing the goods or services of an enterprise.
Classification: International Classification of Goods and Services. Several classes may be covered in a single application.
Filing requirements for an ordinary application (to be sent to authorized agent):
1. Prescribed application form, signed by the applicant or his authorized agent;
2. 10 graphic representations of the mark (size: 7 x 5 cm);
3. Power of attorney, appointing an agent, to be normally filed together with the application (not legalized); may be lodged after the filing of the application;
4. Priority document (if applicable), with verified English translation.
Filing requirements for a geographical indication (to be sent to authorized agent):
1. A specification containing the name of the products to which the geographical indication applies; a description of the product, including its raw materials, if appropriate, and principal physical, chemical, microbiological or organoleptic characteristics; the definition of the geographical area from which the designated product originates;
2. Evidence that the product originates in the defined geographical area;
3. A description of the method of obtaining or producing the product, including as appropriate, the traditional local methods, and information concerning packaging if it is claimed that the packaging is relevant to the claimed characteristics or required to safeguard the quality or ensure the genuine origin of the product;
4. Details bearing out the link between the quality or characteristics of the product and its geographical origin;
5. The name and address of the authority or body responsible for certifying compliance with the specification.
Examination: there is official examination as to distinctiveness and conflicting marks.
Letters of consent: are accepted.
Opposition: applications are subject to opposition proceedings, within three months from the publication date. Time periods are extendible according to the Act.
Duration – extension: ten years, renewable ten years after the date of filing of the application for another ten-year period (grace period: six months with payment of a late renewal fee). Within two months, after the expiry of the six-month grace period, application may be made to the Registrar for the reinstatement of the trademark.
Use of trademarks: compulsory; if a mark has not been used for a continuous period of three years from the registration date in respect of any of the registered goods or services, any interested party may apply to the Registrar to remove the mark from the Register. Is considered valid trademark use: use on commercial material (e.g. invoices, stationery); use by a licensee, provided license has been recorded; export of marked goods/services; or use at exhibitions or fairs held in the country. Nominal use or renewal is not considered proof of use.
Modification of Protection after Registration
Assignment: any change in ownership/assignment must be in writing and shall have no effect against third parties unless recorded. An assignment shall be invalid if it is likely to deceive or cause confusion particularly in regard to the nature, origin, manufacturing process, characteristics or suitability for their purpose, of the goods or services in relation to which the mark is intended to be used or is used.
Licensing: there is provision for licensing of trademarks provided there is effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. The license agreement is considered invalid if it does not provide for such quality control or if not effectively carried out. Failure to record a license does not affect the validity of the registration of the mark that is the subject of the license.
Infringement: Infringing acts are defined as 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; 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 trademark is registered, provided that such use of the mark in relation to those goods or services would indicate a connection between those goods or services and those of the owner of the registered mark.
Remedies: relief can be obtained by way of an interdict, delivery up or destruction of any infringing product.