The recent incidences of cancellations requested by third
parties on trademark registrations in Mozambique due to overdue Declaration of
Intent to Use (DIU) is of great concern to trademark owners in Mozambique.
The Intellectual Property Institute of Mozambique (IPI)
indicated that local Mozambican companies filed these requests and one could
well argue that it was filed in bad faith in an attempt to apply and register
well-known trademarks for purposes of profiteering.
In Mozambique it is not possible to request the cancellation
of a trademark registration on the grounds of non-use. However, the cancellation
may be possible in cases where the holder of the registration did not file a
DIU at IPI by the respective due date. This is provided for in Decree No.
47/2015, the IP Code, Article 138 (for national registrations) and 162 (for
international registrations).
Unfortunately IPI does not notify the trademark owner on
receipt of the cancellation request filed by a third party. The trademark owner
therefore does not have an opportunity to oppose the cancellation request. The
cancellation request will normally be granted on receipt without further notice
to the trademark owner, on condition that the DIU is due and the further grace
period of six months has expired.
In terms of Article 138(1) a DIU should be submitted to
IPI every five years from the date of registration or renewal. Paragraph 2
provides for a grace period “commencing six months before and ending six
months after the expiration of the five-year period”. Paragraph 3 is clear on the consequences of non-submission
of the DIU: "a
trademark for which no declaration has been made is not binding on third
parties, and the termination of the registration will be declared by the
General Director at the request of any interested party, or if there is found to be prejudice during proceedings for other registrations."
For international registrations, Article 162(2) provides
that the DIU must be submitted every five years from the date of the
international registration. Paragraph 3 of the Article clarifies that the date
of the international registration is the date of registration of the
application for an international registration at the WIPO's Bureau.
This led to some confusion, when the General Director of IPI
published notices in the Intellectual Property Bulletin Nos. 92, 93, 94 and 95,
stating that “to ensure the standardization of the different dates of
international trademarks, IPI announces that it will consider as a base date
for counting the term for the presentation of the DIU for international
trademarks, the date of the notification of the registration application in
Mozambique (‘date de notification’ / ‘date of notification’)”. We are
however of the opinion that the procedure in the code should prevail, as it was
established by law (in this case Decree No. 47/2015 of December 31) and it
should not be changed by way of a notice of the General Director of IPI.
The provisions applicable to national registrations apply to
international registrations in respect of the effects of non-submission of a
DIU, as well as the grace period of six months.
In summary, a cancellation may be requested by an
interested third party on the grounds of an overdue DIU, without granting the
trademark owner an opportunity to oppose the cancellation request.
In light of the above we at
BRAZ & ASSOCIADOS, LDA strongly advise our clients to file DIU’s timeously
to avoid the cancellation of a registered trademark, even if the trademark is
in use and well-known in Mozambique.
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