Trade and Service Marks

– Law No. 4/2001 of December 31, 2001.
– Decree-Law No. 23/2016 of February 9, 2017.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since May 12, 1998.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since May 12, 1998.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 13, 2008.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since December 8, 2008.
– ARIPO, Banjul Protocol on Marks, since February 27, 2016.

Filing

Definition: a mark is a distinctive sign, clearly visible, capable of distinguishing goods or services from one undertaking of those of other undertakings. 

Types of marks: (a) collective mark – the one which is designated as such in the application, enables to distinguish the origin or any other common feature, including the quality of the goods or services, of different undertakings that use the same mark and are under the control of the holder of the trademark registration; (b) commercial name – the name which identifies and distinguishes one company.

Service marks: registrable.

Foreign applicant: must appoint a local agent. 

Excluded from protection: those marks which (a) are contrary or offensive to the law or the public order or accepted principles of morality; (b) are susceptible of misleading the consumer or the public on the specific features of the product or service to which the mark relates, namely on their geographical origin, nature or feature of the goods or services in question; (c) reproduce, imitate or contain elements of arms, flags or emblems or any other symbol of official use from one state or inter-governmental organization created by a regional or international convention except if authorized by that state or organization; (d) are identical or similar to a mark or trade name, notoriously known in São Tomé e Príncipe, to the point of misleading with regard to identical or similar goods or services, pertaining to another undertaking or which constitute a translation of the mark or trade name notoriously known and registered in São Tomé e Príncipe for goods or services which do not have to be identical or similar to those for which this protection is applied, provided in this case that the use of this mark or trade name would be susceptible to prejudice the goods or to damage the goods or services for which protection is sought; (e) are identical to a trademark already registered or having a prior date of filing or priority belonging to another holder for the same or similar goods or services to the mark which is sought to be protected and which is susceptible to mislead or create confusion.

Priority: according to the Paris Convention.

Classification: international. 

Multiple class applications: allowed, upon payment of additional class fees.

Filing requirements for an application (to be sent to resident agent):
1. An application in Portuguese;
2. A reproduction of the mark, 4 prints (8 x 8 cm); also required for word marks;
3. A priority document, if priority is claimed (only if demanded by the Administrative Body);
4. A  transliteration if the mark is written in scarcely known characters;
5. A power of attorney is required.

Examination

Examination: after a formal examination, the application is examined as to the existence of prior registered marks for the same goods or services.

Objection: if the application is refused, the applicant is informed and can file a reply.

Disclaimers: available. 

Letters of consent: are accepted.  

Publication: if the application is granted, it is published in the Industrial Property Gazette. 

Opposition: ninety days after publication. 

Reply: ninety days after notification of opposition.

Protection

Duration: ten years from the granting date.

Renewal: may be renewed for further ten-year periods. 

Grace period: six months, with payment of a surtax.

Assignment: is allowed with or without the transfer of the undertaking.

Modification of Protection after Granting

Appeals: any decisions on trademark rights may be appealed in the court. 

Cancellation actions: decisions on trademark rights may be annulled in the court.