Trade and Service Marks

– The Trade Marks Act No. 6 of 1981, effective from July 1, 1994.
– The Trade Mark Regulations 1989.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 6, 1968.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 18, 1988.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since May 12, 1991.
– WTO’s TRIPS Agreement, since January 1, 1995.
– ARIPO, Banjul Protocol on Marks, since March 6, 1997.
– Madrid Agreement Concerning the International Registration of Marks, since December 14, 1998.
– Madrid Protocol, since December 14, 1998.

Note: while Eswatini has signed up to the Madrid Agreement and Madrid Protocol, International Registrations are not enforceable. As this is a common law country, its obligations in term of the Madrid Agreement/Protocol would need to be confirmed by appropriate legislation before International Registrations can be recognized as valid and enforceable. At the moment, no legislation has been adopted to confirm Eswatini’s obligations in terms of the Madrid Union and there are no Registers of International Registrations.

Filing

Applicant(s): any person who or whose proposed registered user uses or proposes to use a trademark, may apply for registration. An address for service in Eswatini must be appointed by foreign applicants.

Essential particulars for registrability: a trademark is defined as any visible sign used or proposed to be used upon, in connection with or in relation to goods or services for the purposes of distinguishing in the course of trade or business the goods or services of a person from those of another. This includes any sign capable of graphic reproduction including a word, name, brand, device, heading, label, ticket, signature, letter, number, relief, stamp, seal, vignette, emblem or any combination thereof. In order to be registrable, the mark must be of a distinctive character i.e. be capable of distinguishing, either inherently so or de facto by reason of the use of the trademark or any other circumstances.

Excluded from registration: are trademarks, the use of which would be contrary to law or morality, or which would be likely to deceive or cause confusion; trademarks which consist solely of the shape, configuration or color of the goods or the containers thereof; trademarks which are identical with or imitate the armorial bearings, flags, and other emblems etc., of any state, or intergovernmental international organization; trademarks which constitute reproductions, or imitations, liable to create confusion, of trademarks or business or company names well-known in Eswatini and belonging to third parties.

Classification: the International Classification of Goods and Services. Several classes may be covered in a single application.

Series marks: permitted.

Joint proprietors: permitted.

Defensive marks or certification marks: not permitted.

Filing requirements for an application (to be sent to authorized agent):
1. Power of attorney, simply signed (notarization and legalization is not necessary). A general power may be filed;
2. 10 prints of the mark (not required for word marks);
3. Full name, nationality, business address and trade or business description of the applicant;
4. Priority document (if applicable, with verified English translation.

Registration, Protection

Examination: for inherent registrability and for conflict with prior registrations or pending applications. 

Disclaimers: available. 

Letters of consent: are accepted.

Opposition: may be filed within three months of the date of advertisement. Extensions of the initial term are granted by the Registrar on request.

Duration – renewal: a registration is effective for an initial period of ten years from the date of registration and, thereafter, renewable for like periods, provided a Statement of Use is submitted confirming that the mark has been in use in Eswatini at any time during the three years prior to the date of expiry. Proof of use includes invoices, delivery notes, packaging or labels of the product as used in Eswatini. For service marks, proof of use includes copies of invoices issued for services rendered and photographic evidence of the use of a trademark on business premises situated in Eswatini.

Renewal fees: fees can be paid either within a six-month period before the expiration of the registration, or within a six-month period after the expiration of the registration and in the latter case, an additional fee will be payable.

Marking of goods: notice of registration by use of the legend “Registered Trade Mark” or suitable abbreviation (e.g. “Regd. TM”), or the symbol ®, advisable but optional. It is an offense to falsely represent that a trademark is registered. 

Assignment: any change in ownership/assignment must be in writing and shall have no effect against third parties unless recorded. An assignment may be made with or without the goodwill of the business. An assignment is invalid if the assignment is likely to deceive or cause confusion. 

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.

Use: compulsory. Non-use during a period of three years from the date of filing renders the registration vulnerable to cancellation on request of third party, provided no such action may be brought within five years of the date of registration, which is deemed to be the filing date. 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.

Infringement: proceedings can only be brought in respect of registered trademarks and can be brought in respect of the exact goods and services and for similar goods and services for which a trademark is registered.

Remedies: no specific remedies.