Trademark Registration in Liberia

Overview of Trademark Registration in Liberia

The Liberia Intellectual Property Act 2016 deals with injunctions, payment of damages and the destruction of goods, along with provisional measures that are designed to preserve evidence. It states that, in exceptional circumstances where there is a real danger of evidence being without notice to the alleged infringer. In some countries, these measures are called Anton Piller orders.

The Act also has border measures that aim at the prevention of the import of goods bearing counterfeit marks or pirated copyright goods; these measures are in addition to the seizure measures referred to earlier under Trade Marks and Geographical Indications.

These border measures provide that a rights holder can apply to the Director General of LIPO for an order requiring the customs authority to suspend the clearance of particular goods. The customs authority must then allow the rights holder to inspect the goods, remove samples for examination and testing, and file court proceedings within 10 days. The rights holder must file security to cover any claim for damages that the importer may bring. If the rights holder does not institute proceedings within 10 days, the goods are released.

Benefits of Trademark Registration in Liberia

A registered trade mark entrusts the owner with exclusive rights of using the trademark to market their products and services, along with the protection against others from using the same mark or a similar mark without having authorisation for the same. A well-maintained trade mark helps in building the owner's brand, followed by becoming an asset to their enterprise, thereby enabling the expansion of their business by licensing it to others, franchising or obtaining finance.

Authority Responsible for Trademark Registration in Liberia

The authority for trademark registration in Liberia shall depend upon the type of trade mark. The various authorities in respect of the same are –

• Liberia Intellectual Property Office (LIPO)
• ARIPO, for regional marks
• Country designation through the International Bureau (WIPO) or Madrid System in case of International trademarks

Eligible Trademarks for Trademark Registration in Liberia

Any visually perceptible sign, or any combination of signs,  having the capability to distinguish the goods or services of one undertaking from another can be registered as a trade mark.

Ineligible Trademarks

A sign may not be validly registered as a trade mark if:

• It doesn’t have a distinctive character or is otherwise not capable of distinguishing the goods or services of one enterprise from other.
• It contains exclusively a sign or indication which might  be used in trade  for designating the  quality, quantity,  kind, intended purpose, value, geographical origin, rendering of services,  time of production of goods, or other characteristics of goods or services in respect of which the mark is to be used;
• It contains exclusively a sign or indication that became customary in the current language or in the bona fide established practices of the trade  for designating goods or services  for which the mark is to be used, or that is a usual or recognised technical or scientific name of those goods or services;
• It consists of the shape of a product or of its container or packaging wherein the shape is derived from the nature of the product, container or packaging, or it is a shape that provides a technical effect, functional advantage or substantial value to the goods;
• It is not distinct or separable from the goods or services to which it applies, or it consists of a feature or characteristic resulting  from the nature of the goods or services themselves;
• It is contrary to public order or morality; however, the nature of the goods or services to which a mark is to be applied may not be an obstacle to registration of the mark;
• It is likely to deceive or mislead the public or trade circles, in particular as regards the geographical origin or provenance of the goods or services concerned or their nature, quality or other characteristics;
• it is identical with or is an imitation of or contains as an element, any sign covered under Article 6 of the Paris Convention unless authorised by the competent authority of the State or organisation concerned;
• The use of such a mark would conflict with prior third-party rights in force in Liberia, in particular, where

1. The sign is identical with or similar to an earlier registered mark or geographical indication;
2. The sign is a reproduction, imitation or translation of a distinctive sign that is well known in Liberia in respect of identical or similar goods or services of another person;

• The use of the sign in Liberia shall be prevented by virtue of any rule of law, in particular, protecting an unregistered mark, trade name, geographical indication or other sign used in the course of trade or by virtue of an earlier intellectual property right, in particular, the law of copyright or of industrial designs;

1. The application for registration has been filed with bad faith, or the registration of the sign would be consolidating or facilitating an act of unfair competition.

Documents Required for Trademark Registration in Liberia

The below-mentioned Documents shall be required to be attached to the application for trademark registration in Liberia.

• A sufficiently clear reproduction or representation of the mark, as prescribed
• A list of the goods or services based on the Nice Classification system;
• Proof of payment of the requisite  application fee; and
• Copy of priority Document if applicable;
• A Power of Attorney legalised;
• A declaration and statement of the case where the applicant isnt the owner of the trade mark.

Procedure for Trademark Registration in Liberia

The procedure for trademark registration in Liberia is discussed

Filing the Application

The applicant must file the application for trademark registration with the competent authority depending upon the type of trademark, accompanied by the requisite Documents and payment of the prescribed fees.

Examination

Subsequent to the filling of the application and payment of the requisite fees, the application shall be referred to the Registrar in charge of the registration of marks by the Director General, who shall further conduct an examination for ascertaining the entitlement of the registration to the applicant.

 Notification of non Compliance

In the event of non-compliance of the application with the prescribed requirements, a notification in respect of the same shall be given to the applicant by the Director General requesting him to make the necessary corrections within 2 months. Any delay in making the corrections in the prescribed timeline shall lead to the consideration of the application being withdrawn by the applicant.

Advertisement

Upon the required corrections being made by the applicant, the director general would be publishing the application in a prescribed manner.

Opposition

Any interested person may file with the Director General a notice of opposition to the registration of the mark within the prescribed period and in the prescribed manner, specifying the grounds that the opponent deems relevant for refusing the registration of that mark.

The applicant shall be notified about the opposition by the Director General, and the applicant will be required to reply to the opposition in the prescribed manner within 3 months.

Upon the submission of the reply by the applicant, the Director General shall furnish a copy of the same to the opposing party giving notice of opposition and shall hear the parties if either or both intend for the hearing.

Grant of Registration Certificate

 If it is found by the Director General that the conditions for registration are fulfilled, he/she shall refer the applicant to the  Registrar for registration of the mark,  publication of a  reference to the registration and issuing the applicant a  certificate of registration. Otherwise, he shall refuse the application.

Priority

The period of priority shall be for six months and shall be as per the provisions of  Article  4  of the  Paris  Convention,  from the date of filing of the 1st  application, but shall exclude the day of filing in the six months period, and shall be ending on the last day of the period unless an official holiday or a day the IPO isn’t open in which case the period shall be extended until the next working day for the filing of the application.

Term of Registration and Renewal

• The term of registration of a mark shall be of 10 years from the date of the registration.
• The registration of a mark may be renewed for further consecutive periods of 10 years, each upon compliance with the prescribed requirements and payment of the prescribed renewal fee.
• A grace period of six months shall be allowed for the renewal of the registration on payment of the prescribed surcharge. 
• If renewal does not take place as prescribed, the registration of the mark shall lapse.