Requirements for registering a trademark:
- A trademark must be distinctive, meaning it must distinguish itself or be fit enough to differentiate goods/services of the business it represents from those of other businesses in the same industry or beyond.
- A trademark must not be laudatory/self-praising e.g. first class…, best quality…., top quality……, best ever etc.
- A trademark must not consist of offensive, derogatory, immoral or confusing elements/phrases or any words perceived to be an insult in some cultures/beliefs/communities/traditions etc.
- It must also not be identical or confusingly similar to an already registered trade mark by another applicant in respect of similar goods/services.
- A trademark should not consist of a code of arms, seal or national flag; or any indication of State patronage.
Procedures for registering a trademark:
- Firstly it is advisable that applicants of trademarks conduct a trademarks similarity search on the BIPA trademark database, to confirm the availability of the mark which is being applied for.
- Once certain that the trademark is indeed available, the applicant must obtain a Trademark Application form (Form TM 1) from the IP Office, or the MITSMED Regional Offices.
How to Complete the Trademark Application Form (Form TM 1):
- Next to Particular of Trademark, write your trademark or paste a representation of your mark (in case of logos or combination of logos and wordings)
- Class: Choose the class from the list of classes attached (one or more classes per form) which best describes the goods/services you intend to offer through your trademark.
- Specification of goods/services: Indicate the goods/services you intend to offer through the trademark as per the chosen classes. Even if wordings might not be the same as those listed under the chosen classes, let the goods/services relate to the chosen classes (strictly enforced).
- I/We: Write your company name or your personal name if you do not have an existing company name yet.
- Indicate the nationality of the applicant
- Write the business””””s physical address/or your own personal residential address, or the address of the place were business is being conducted (depending on whether the applicant is an individual or a company)
- Address for service: This requires the name of the applicant (if an individual) or company, or the name of the legal representative (in case of applying through law firms). Postal details of the law firm or the individual applicant are also required.
- Acknowledgement of Application: Next to Name of applicant, write the applicant’s name again (whether a company or individual name).
- Particulars of Trademark: Describe your trademark. If consists of a combination of words and logos, or even logo only, write a short description of your mark (This assists the capturers to capture the mark on the Trademarks Database (IPAS) system as it must be entered by description).
- Address for service: Enter the name of the applicant (whether an individual or company, or the name of legal representative in case of applying through a law firm). Also add the postal details of the law firm or the individual applicant.
- After completing the form, pay N$600.00 at the cashier (EFT also accepted) for the first class and N$480.00 for each additional class, and submit your application at the Trademarks Office together with the proof of payment.
- In case the trademark takes the form of an emblem/logo, or a combination of emblem, logo and wordings; kindly attach 4 copies of the representation of the mark to the application form.
- Finally,add 2 copies of the completed trademark application before submission to the Trademarks Office.
The process after lodging the application until registration:
- Once a trade mark is received by the Industrial Property Office, it is captured on the Trademarks Database (IPAS). During capturing, the system generates a unique number reflecting the year in which the trademark was received, followed by a four digit number which is sequentially allocated. This important exercise is then followed by forwarding the marks to the examiners for examinations. The trade mark is then examined by the examiners (officials in the IP Office) where it is checked for compliance with the requirements for trade mark registration.
- Examiners produce an examination report, and forwards it to the applicants directly or through their legal representatives or IP agents.
- Once examiners receive a response from the applicant or their legal representatives (IP agents), they prepare and issue the Preliminary Notice of Acceptance which allows the trademark to be advertised in the Industrial Property Bulletin by the applicant or by his/her legal representatives (IP agents).
- After advertising the trademark in the Industrial Property Bulletin, the applicant directly or through an IP agent, is obliged to inform the examiners (IP Officials) about the bulletin date in which the mark was advertised. It is crucial for the examiner to receive this information (bulletin date) in order to accurately calculate the two months possible opposition period.
- Once a trade mark is advertised in the Industrial Property Bulletin, it is open for opposition/objection by any person for a period of two months.
- Once the two months opposition period has expired, and the advertised trademark remains unchallenged on any grounds for opposition; the examiner will then grant protection by issuing the Registration Certificate to the applicant directly or through the IP agent. If the trademark is opposed, it goes through opposition proceedings as stipulated in the Industrial Property Act No. 1 of 2012.
Maintenance of a trademark before registration:
- This constitutes any alteration by the applicant directly or through IP agents, on the submitted trademark application in its pending status e.g. changes of the physical or postal address of the applicant or their IP agents; alterations of goods/services for which this particular trademark was applied for; as well as the alteration of the trade mark itself.
- IP Officials ensure that all changes are affected in the trademark register as per request from the applicant or their IP agent.
Maintenance after registration:
- This applies to the renewal of the trademark on or before expiration (after ten years).
- This also applies to any alteration by the applicant directly or through their IP agent, of the submitted trademark application in its granted/registered/protected status e.g. change of the physical or postal address of the applicant or their IP agent; amendments of goods/services for which this particular trademark was applied for; as well as the amendment of the trade mark itself.
- Other requests can relate to applicants losing interest in their trademarks and consequently request for cancellation, abandonment, or withdrawal of their marks.
- Should the applicant fail to renew the trademark on or before the expiration date, IP Officials, in accordance with the provisions in the Industrial Property Act No. 1 of 2012, are obliged to REMOVE the concerned marks from the Trademarks Register.