THE MADRID PROTOCOL IN ZIMBABWE: 3 years on!
Zimbabwe became a member of the Madrid System on the 11th of December of 2014 and the Protocol entered into force on the 15th of March 2015. On the 15th of March 2018 the Madrid Protocol reached three (3) years in operation. The Trademarks (Madrid Protocol) Regulations were published in the Government Gazette of Zimbabwe through the Statutory Instrument 39/2017, dated 13 March 2017, bringing the Madrid Protocol into operation in Zimbabwe. Zimbabwe was the 94th member of the Madrid System when it acceded to the Madrid Protocol The Madrid Protocol now has 100 members. This indicates that the Madrid Trademark System is continuing to grow and expand to include countries throughout the world.
Initially, there were worries regarding the enforceability of the Madrid system in Zimbabwe as the national laws had not been amended to incorporate Madrid Protocol and the regulations for implementation had not been published. However, the relevant laws and regulations are now in place and Madrid Protocol has been incorporated into and will be enforced under Zimbabwe laws. Although there remains some technical issues, such as, broad band capacity, digitalization and systems compatibility, the Madrid System in the Zimbabwe Trademark Office has evolved over time and these issues are being sorted out. Our office was the first to file an application for International Registration with the Zimbabwe Trademark Office as the office of origin, designating countries, including EU, USA, Canada to name a few. The trademark has now been registered using the system in a number of countries through the WIPO International Bureau.
Should you require further explanation or assistance, please do not hesitate to contact us.
ZIMBABWE: What you need to know about Plant Breeders’ Rights: procedure and requirements?
Plant breeders’ rights (PBR) in Zimbabwe, also known as plant variety rights (PVR), are rights granted to the breeder of a new variety of plant that give the breeder exclusive control over the propagating material (including seed) and harvested material (cut flowers, fruit, foliage) of a new variety for 20 years from the date of grant and renewable for an additional five years thereafter subject to justification by the applicant and the Registrar’s discretion.
As with other intellectual property rights PBR’s enable the breeder to choose to become the exclusive marketer of the variety, or to license the variety to others. In order to qualify for these exclusive rights, a variety must be new, distinct, uniform and stable and has a suitable denomination.
This conditions are explained as follows:
New.
Distinct.
Uniform.
Stable.
Denomination.
The largest organisation in the world that deals with the administration of Plant Breeders Rights is the Union Internationale pour la Protection des Obtentions Végétales (UPOV). Some time ago, the Zimbabwe government amended its legislation to allow membership in UPOV. However, the government had failed to satisfy certain prerequisites to allow its membership. Accordingly, Zimbabwe is not a member of UPOV until such time as all the prerequisites are satisfied. However, registrations for protection of plant breeders rights are permitted under the Plant Breeders Rights Act and the Seeds Act. Moreover, it is important to note that even though Zimbabwe is not yet a member of UPOV, the UPOV guidelines are followed. The following is a list of some of the requirements that need to file an application for Plant Breeder Right’s in Zimbabwe:
The completed application forms.
The DUS report (Distinctness, Uniformity, & Stability) from the country of Origin.
Consent Form from the respective Plant Breeder.
The completed and Power of Attorney.
Photographs of the various type of seed, plant, flowers and or fruit.
Once the Plant Breeder Rights application forms have been completed, they are filed together with an application fee of USD $1,000.00 per application. If the application passes the examination process then the next steps are the publication stage and objection period, the latter is three (3) months.
ARIPO: Changes to the Harare Protocol
Requirement to request substantive examination. As you will recall, in our E-news Flash in 2017 we informed you that ARIPO had made it mandatory to file a request for substantive examination for every patent application. Patent applications are now only examined upon request and subject to the payment of the examination fee. The Applicant is provided with a maximum time of 3 years from the international filing date (for PCT applications entering national and regional phase) and 3 years from the date of filing at ARIPO (for Paris Convention Patent applications which may or may not claim an earlier priority date) to file a request for substantive examination. Missing the deadline for filing request for examination can prove disastrous for the patent as the application will be deemed to have lapsed if no request has been submitted by the due date. The above rule has gone a long way to streamline the substantive examination of patent applications at ARIPO.
Expedited/ Accelerated Examination or Delayed commencement of substantive examination. In the past, there had been no straightforward procedure provided by the Protocol to expedite the examination of patent applications or to delay its examination in the event the applicant desires to await acceptance or clarification of claims. At the ARIPO Administrative Council Meeting on 20 to 22 November 2017, amendments were approved to the Harare Protocol on Patents and Industrial Designs making way for a new rule which allows a patent applicant to request an Expedited/ Accelerated Examination or Delayed commencement of substantive examination. This change became effective on 1 January 2018. This new rule 18(7) specifies that the Proprietor may upon request submitted through the appropriate ARIPO form require that ARIPO substantively examine the patent application in a certain ‘preferential manner’ adhering to a modified timeframe. This modified timeframe will depend on how complex the examination process turns out to be.
Below are some of the requirements to be met before a request for expedited/delayed examination may be filed at ARIPO:
Expedited examination:
a request for substantive examination has been filed;
the applicant agrees to respond immediately to any clarifications sought by the examining division;
the application does not become abandoned and reinstated before the conclusion of the examination; and
a search report is provided based on claims corresponding to the claims of the ARIPO application
Delayed examination:
a request for substantive examination has been filed;
a written explanation providing the reason behind the request is submitted with the request; and
the application does not lapse due to non-payment of formalities.
Under the amended rules, a request for expedited examination can be filed along with payment of the official fee of $700.00. Please don’t hesitate to contact if you require additional information or would like to enquire our fees to attend to the same.
ARIPO: Changes to Banjul Protocol on Marks Fee Schedule – specifically substitution of the word ‘Mark’ with ‘Class’
At the previously held Administration Council there was also a change in the form of a substitution/ replacement of the word ‘Mark’ with the word ‘Class’ for fee items 11, 13, 14, 15, 18 and 19 of the Banjul Protocol on Marks. These fees items refer to the following Recordals:
Request for correction of error(s), change(s), or alteration(s) of Application or Registered Mark,
Application for Registration of Registered User,
Application by Registered Proprietor and Registered User of Mark to Vary Entry of Registered User,
Application by Registered Proprietor and Registered User of Mark to Vary Entry of Registered User,
Registration of assignments, transmission or other form of transfer, and
Application to ARIPO to register a license or other similar rights.
Although ARIPO states that this change was merely a clarification in the multiple interpretations that existed on how the official fees for these records were calculated, the change has resulted in substantial increase in the official fees. For example, with regards to filing for a Change of Name recordal which would fall under fee item 11 above, for 1 (one) mark with 2 (two) classes designating all 10 (ten) member states the fee prior to this language change is $500 but with the change of language the fee will be $1,000, which is a 100% increase in the calculated fee. For more information and our updated fee schedule please do not hesitate to contact us.