Like any other class of Intellectual Property, there has been a huge misunderstanding and a substantial degree of perplexity by the general public on the question of trademarks and their protection.
Repercussions of this have therefore been serious infringements and mishandling of these marks. Due to the immense content pertaining to trademarks, this article shall briefly elaborate to minimal extend what they are, when and how they are protected especially in the context of Lesotho.
What is a trademark?
Simply put, a trademark is a means that a producer of goods or services conveys a message that ‘this is my product/ service’. It is a distinctive sign, symbol, name, phrase, slogan, design or combination thereof that a producer of goods or a supplier of services uses in relation to his goods and services in order to inform the public that he is the source or the provider of those goods or services. Or conversely that the goods or services in question are provided by him.
Which laws protect trademarks?
In Lesotho, the laws that regulate and establish the registration of trademarks is the Industrial Property Order No. 5 of 1989 and of course the Common law which deals with regulation of marks that fall outside the statutory law.
Trademark law, as is copyright and patent law, is a creature of statutory law. Meaning all procedures and regulations of its protection are provided for the by the legislation.
What prerequisites must a mark satisfy in order to serve as a trademark? – Section 26
In Lesotho, a registration of a mark, sign or symbol can only be afforded to a person only when a number of fundamental requirements are met.
- Since the primary function of the trademark is to tell the public that the goods or services come from you and no one else, the mark ought to be distinctive. In other words, it should be able to distinguish the goods or services of your enterprise from those of another person.Furthermore, because a trademark is the brand of your enterprise; the distinctive feature helps consumers locate your enterprise in a wide range of similar products.
- The mark should not be contrary to public order or morality. In order to decide whether a trademark registration is contrary to public order or good morals, judgement IS usually made based on the appearance, concept or pronunciation of the trademarks, the social environment at the time of registration, the market for the designated products or services and public perception. It will then be considered whether it is contrary to or destroys religious, familial or social values, or affects the public interest.
- There is a question of deceptiveness. If a mark is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics it will not be protected.
- The mark should not be identical with, or be an imitation of, or contain an element, an armorial bearing, flag and other emblem, a name or abbreviation or initial of the name of, or official sign or hallmark adopted by, a State, intergovernmental organization created by an international convention, unless authorized by the competent authority of that State or organization.
- The mark should not be identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in Lesotho for identical or similar goods or services of another enterprise.
- It should not be identical with a mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date, in respect of the same goods or services, or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
- The mark should not be identical with, or confusingly similar to, or constitute a translation of, a mark which is registered and well-known in Lesotho for goods or services which are not similar to those in respect of which the mark is registered, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark and provided that the interests of the owner of the registered mark are likely
to be damaged by such use.
What’s the procedure of registration?
Anyone whose mark has fulfilled the prerequisites mentioned above can file their trademark with the intellectual Property Registrar’s office. This is where the examination shall be made, publication for the public to review and many other prosecution procedures of the application.
It is important to note that trademarks registration is jurisdictional. In other words, protection will be afforded in the country where the registration has been made. If you file for a trademark in Lesotho, and would like protection in the neighboring countries or elsewhere, the similar procedure of registration would have to be made in line with the requirements of each particular country.
Adv. Leisa Leisanyane
Business and Entertainment lawyer. LLM in Intellectual Property law candidate at Stellenbosch University. Co-founder of Leinn Inc. Legal advisor of Lesotho Music Rights Association and legal counsel for Junior Chamber of Commerce Lesotho.