Madrid Protocol and Hague System Effective in Mauritius on May 6, 2023

Starting May 6, 2023, businesses, and individuals in Mauritius, by means of the Madrid System, will be able to apply for protection of their trademarks internationally by submitting one single application. This will protect the trademark’s rightsholders in 129 jurisdictions across the globe. In addition, Mauritius will access The Hague Agreement, allowing Mauritian businesses and individuals to register their industrial designs in 96 jurisdictions through one single application. These landmark achievements were long awaited and are expected to major drivers in R&D and the protection of intellectual rights, and industrial designs for Mauritian businesses.

On February 6, 2023, the Government of Mauritius deposited its instruments of accession to the Madrid Protocol and the 1999 Geneva Act of the Hague Agreement with the World Intellectual Property Organisation (WIPO). Both the Madrid Protocol and the 1999 Act will enter into force in Mauritius on May 6, 2023.

The Madrid Protocol simplifies the process for registering and managing international trademarks using WIPO’s Madrid System. Trademarks, as defined by Article 15 of the World Trade Organisation’s Agreement on Trade-Related Intellectual Property Rights, are “[any] sign, or any combination of signs, capable of distinguishing the goods or services of one   undertaking from those of other undertakings”. Examples include personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs. These marks have economic value, as they can build up a reputation and generate goodwill. The trademark system thus serves to protect producers against unfair competition from other producers seeking to “free ride” on the reputation earned by the trademark owner.

Starting May 6, businesses and individuals in Mauritius will be able to apply for protection of their trademarks in 129 other jurisdictions covered by the Madrid System by submitting one single international application. The benefits of the adoption of the Madrid System are multiple:

  • The Protocol provides a cost-effective solution for Mauritian businesses to protect their trademarks globally by paying one set of fees for a single international application.
  • Applicants based in countries party to the Madrid System will be able to choose to protect their trademark in Mauritius.
  • Existing holders of international registrations will be able to broaden their geographical scope of protection to include Mauritius.

According to the Industrial Property Regulations 2022, any citizen of Mauritius, person residing in Mauritius or legal entity can file an international application with the Director of the Industrial Property Office provided that the application or basic registration is in the name of the person or legal entity. The Industrial Property Regulations 2022 also stipulate that the international application should be made in accordance with Articles 3, 3bis and 3ter of the Madrid Protocol and Common Regulations, which require the application to contain:

i) reproduction of the mark – in particular, if the applicant claims colour as a distinctive feature of the mark, this should be clearly stated and a notice specifying the colour or combination of colours should be attached to the application;

ii) specification of the goods or services with regards to which registration of the mark is sought in accordance with the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks;

iii) in the case of a basic application, data, and number of that application;

iv) in the case of a basic registration, data, and number of that registration as well as the date and number of the application from which the basic registration resulted;

v) States or organisations which are designated.

Like national registrations, international registrations of marks are valid for a period of ten years, renewable for additional periods of ten years from the expiry of the preceding period after the payment of the required fees. There is no limit to the number of renewals. International registrations can also be renewed directly with the WIPO through the Madrid e-Renewal Service. According to the First Schedule of the Industrial Property Regulations 2022, the fees for the application and renewal of marks are as follows:

Table 1 Trademarks: Applicable Fees

Source: First Schedule of the Industrial Property Regulations 2022

In addition, the 1999 Geneva Act of the Hague Agreement enables businesses and individuals to register up to 100 industrial designs in 96 countries by filing a single international application, streamlining the process and costs for protecting designs globally. An industrial design refers to the ornamental or aesthetic aspect of an article, rather than its technical features. Such designs can consist of three-dimensional features, such as the shape of an article, or of two-dimensional features, such as patterns, lines or colours.

Starting May 6, 2023, businesses and individuals in Mauritius will be able to protect their industrial designs internationally through the submission of one application, made in English. Applicants based in countries that are party to the Hague System will also be able to file for protection of their designs in Mauritius.

According to the Industrial Property Regulations 2022, an applicant who has (1) real and effective industrial or commercial establishment in Mauritius, or (2) is a resident, or (3) citizen of Mauritius can submit an application for the international protection of designs from Mauritius. The domestic legislation requires that the application be filed in two copies and specify the following:

i) name and address of the applicant;

ii) number of industrial designs for the application (maximum of 100);

iii) the product or products that comprise the industrial design or in relation to which the industrial design should be used, identifying which is the case among the former options;

iv) the designated Contracting Parties.

The Industrial Property Regulations 2022 also stipulates that the application can contain the optional elements referred to in Articles 5(3) and 5(4) of the Hague Agreement. Article 5(3) states that the international application may contain or be accompanied by other elements specified in the Regulations:

i) the name and address of the representative;

ii) declaration claiming priority of earlier filing if required;

iii) a declaration that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate;

iv) any request for deferring the publication of the industrial design.

In terms of protection, the maximum duration of protection for industrial designs in Mauritius is 20 years. Unlike the registration of marks, payment of fees for international registration of industrial designs must be made directly to the International Bureau of WIPO, irrespective of whether the application is filed with the Intellectual Property Office in Mauritius or directly with the International Bureau. The eHague platform allows for online management of applications and renewal of registrations. Requests for renewal of international design registration must also be made directly to the International Bureau. The Schedule of Fees for the international registrations and renewals can be accessed on this link.

The adoption of these two intellectual property right treaties by Mauritius will strengthen the confidence of the international private sector in the country’s protection of intellectual property rights, enabling the country to attract further investments and companies wishing to establish themselves in Mauritius. They will also spur innovation in Mauritius by protecting the rights of trademarks and designs across a wider range of countries in one simple process.

International Economics Consulting Ltd (IEC) is an independent consultancy firm working with national and international development partners, governments, and the private sector to create value and promote sustainable growth and development. With extensive experience in trade policy, research and negotiations, IEC can support governments and businesses deal with unfair trade practices and unforeseen consequences of free trade by providing analytical expertise and support.

Authors:

Paul Baker, Chief Executive Officer |+230 263 33 24 | baker@tradeeconomics.com

Pablo Quiles, Manager of Trade Advisory Services |+230 263 33 24 | quiles@tradeeconomics.com

Smita Bheenick, Project Manager & Trade Specialist |+230 263 33 24 | bheenick@tradeeconomics.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about specific circumstances.

References

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Available at: WIPO Lex

Industrial Property Regulations 2022, Available at: Industrial Property Regulations 2022.pdf (govmu.org)

Industrial Property Act 2019, Available at: The Industrial Property Act 2019 (Act No. 15 of 2019) (wipo.int)

Geneva Act 1999, Available at: WIPO Lex

World Trade Organisation – Agreement on Trade-Related Intellectual Property Rights. Available at: WTO-TRIPS

WIPO – Industrial Designs. Available from: WIPO-Industrial Designs

This article has also been published on the Mondaq website

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