The Trademark Act 2010 was published as Act 7 of 2010 and has as its effective date, the 3rd of September 2010. This law is timely as service providers have waited for a long time for protection of their brands, which was not permitted under the old Trademarks Act.
For the time being, the new law saves use of the trademark form, fees and regulations. Some of the other new changes include the following:
* Mandatory requirement for applicants to conduct searches under S.5. Many applicants would prefer to avoid this altogether but in practice, it may save the applicant in two ways. First of all, once fees are paid, the applicant can not get a refund if it is discovered that another proprietor has already filed an identical or closely similar mark. They can only file for removal of the mark on grounds such as non use etc. Secondly, Conducting a search before filing (although it is currently imperfect as the electronic database is still being constructed) gives the applicant an idea of the likelihood of oppositions based on marks already on the register. The search results should not in themselves act as an absolute bar for an applicant to proceed, particularly if existing marks can be distinguished from the intending applicant's goods. A good case in point is where there may be some similarity but the class of goods differs.
*Another new provision is the option for an intending applicant to seek preliminary advice by the registrar as to distinctiveness under S.6. This provision seems not to apply to pending applications which could have been another way of reducing opposition proceedings and expense to all parties in such matters.
*Publication period is maintained at 60 days.
*Under Section 24, the new Act protects the bona fide use by a person of his own name or place of business as well as any description of the character of his goods or services. This is particularly important as it was not clearly provided for under the old Trademarks Act.
*The new Law also provides for Concurrent use under Section 27. Under this provision, 'the registrar or court may permit the registration by more than one owner, in a case of honest concurrent use or other special circumstances'.The Trademark Act, 2010 contains many new provisions that clarify issues such as non use, revocation and others. A more extensive article will highlight these new developments and be posted on this blog. Request for a scanned copy of the Act here.