Trademark Registration in Mauritius: An overview
Mauritius is a ‘first to file’ jurisdiction where the first person to file and register the trademark gets the exclusive rights associated with the ownership of the trademark and not the person who actually devised it the first time. Protection over the use of trademarks in Mauritius is available within the territory of Mauritius only. Most of Mauritius’ IP laws are TRIPS compliant, but in practice, the level of implementation may be different compared to the other countries.
Though Mauritius is not part of the NICE agreement, its classification is based on the NICE Classification. Mauritius is also a contracting state to a number of international agreements, viz. ARIPO, Madrid Agreement, Berne Convention and Madrid Protocol, Beijing treaty on AV Performances, TRIPS Agreement, Paris Convention, Trademark Law Treaty, WIPO Convention and Hague System for International Registration of Industrial Designs.
Authority for trade mark registration in Mauritius
The statutory authority for the purpose of registration of trademarks in Mauritius is the Industrial Property Office of Mauritius. Trademark registration in Mauritius is governed by the Intellectual Property Act of 2019, which lays down the various aspects of trademark registration in Mauritius.
Marks that CANNOT be trademarked in Mauritius
The following marks have been prohibited from registration in Mauritius:
- A mark that lacks distinctive character or it is incapable of distinguishing the services and goods of one proprietor from those of others;
- A mark that consists of a sign or indication that is used in trade to designate the quality, quantity, kind, intended purpose, geographical origin, value or time of production of goods or of rendering of services or other goods or services. These are descriptive marks such as the term ‘delicious’ cannot be registered for food products as the same would be considered descriptive;
- A mark which consists solely of an indication or sign which has become so generic in the current language or in bona fide practices of trade or is a usual or recognised scientific or technical name of a service or product. For example, the term ‘Water’ cannot be registered as a trademark since the term ‘water’ is a generic name for the product;
- A mark that is contrary to morality and public order i.e. those illustrations or words that have the potential to violate the commonly accepted norms of morality and religion of the Mauritian society will not be allowed to secure trademark registration in Mauritius;
- A mark that contains armorial bearings, an emblem or flag of a State that is a party to the Paris Convention or an International organisation, an official sign indicating control, warranty adopted by any organisation or state, or the mark imitating those signs from a heraldic point of view. For example, the flag of Mauritius cannot be registered to market any product or service without obtaining authorisation from the government;
- A mark that is likely to mislead, in particular, regarding the geographical origin of the services and goods concerned or their quality, nature and other characteristics. These are deceptive marks. For example: applying for non-vegetarian products and using the vegan sign is considered a deceptive practice, and the mark will not be registered;
- Identical or confusingly similar trademarks, such as the ones that are too similar to prior trademarks on the office database; or
- Well-known marks in Mauritius cannot be registered as trademarks in Mauritius.
Procedure for filing a Trademark application in Mauritius
The following procedure must be adhered to at the time of filing an application for the registration of a trademark in Mauritius:
- Designing of trademark
- Determining the classification of goods and services to be trademarked
- Conducting prior trademark searches before filing the application
- Filing of application for the registration of a trademark
- Examination of the proposed mark by the Industrial Property Office of Mauritius
- Publication of the applied mark and invitation for opposition
- Registration of the trademark
- Designing of trademark -
The first step in process of registration of a mark is designing the mark. The marks should be designed in such a manner that they are distinctive signs that are capable of distinguishing their services or products from those of others in the market. A trademark in the form of words, numerals, letters, drawings, pictures, colours, labels or combinations of these can be registered as trademarks in Mauritius, provided they do not fall within one of the categories of marks that are prohibited. A trademark should be either a service mark, collective mark, certification mark etc.
- Determining the classification of services & goods to be trademarked -
It is necessary to keep in mind that the services and goods for which the trademark is being applied should be clearly listed in the NICE Classification for the International Registration of Goods and Services. The application should consist of all the services and goods which you want to receive your trademark for. The NICE Classification is classified into 45 classes out of which 1-34 are related to goods and 35-45 are related to services.
- Undertaking a prior trademark search before filing the application -
It is not mandatory for a proprietor to conduct an online search before filing the application of registration. However, official trademark availability searches are available before filing application. Prior to filing an application for trademark registration, it is advised to conduct a trademark search to find out whether a similar mark or design already exists with the same name and also to prevent the chances of infringement of an existing trademark. The prescribed fee for the trademark search is MUR 300 (which is approximately USD $7). The trademark search can be conducted at the Industrial Property Office of Mauritius between 9:30 am to 14:30 pm upon payment of the said fee.
A proprietor must always remember that merely searching the database and finding the search results to be ok does not mean that the trademark can be registered. The Office also conducts a trademark search on its own after filing the application and reviews it before accepting or refusing the application.
- Filing the application for the registration of trademark -
The following formalities have to be completed while filing an application for the registration of the trademark in Mauritius:
The proposed mark has to be clearly affixed in the space provided under the heading ‘Representation of the mark’ in the application, along with one reproduction of the mark has to be submitted in the soft copy. If there is any figurative element in the mark, then it has to be clearly identified, and the correct title of the mark has to be inserted.
The services and goods for which the registration is being sought have to be correctly and clearly listed under the NICE classification for the International Registration of Goods and Services. The application has to be accompanied by prescribed fee, which is Mauritian Rupee (MUR) 6000 (approximately USD 135), and the fee prescribed for every additional class filed in the application is MUR 2000 (approximately USD 46). The prescribed fee has to be made to the Government of Mauritius via cheque payable, cash, credit card or debit card.
In case the applicant’s ordinary residence or principal place of business falls outside of Mauritius, then the applicant has to be represented by an approved agent or a legal practitioner residing and practising in Mauritius. In the case of a foreign resident who is residing in Mauritius, proof of residence or any such document acceptable to the Office has to be provided.
If the mark or characters proposed is in a foreign language, then a transliteration and/or translation of the mark/characters has to be submitted along with the application. The Certificate of Incorporation or any other supporting document is required to be filed in case the application is filed in name of a legal entity or a company. The registration of a trademark confers upon the registered proprietor the exclusive right to use the trademark and prevent any unlawful use of the same.
- Examination of the mark by the Industrial Property Office of Mauritius -
The examination of the trademark application is undertaken by the Industrial Property Office of Mauritius, where it examines whether the information required for filing an application for registration of a trademark is complete or not. It also examines whether the proposed mark meets the definition of a trademark or not.
If the Director finds any deficiencies in the application in terms of furnishing the required information, he shall request the applicant to furnish the additional information, or he may ask to amend the application within the prescribed time period. If the application fails to comply with the request made by the Office, the application shall lapse.
- Publication of the applied mark and invitation for oppositions -
If the director finds that all the requirements to file the application for the registration of the trademark have been met by the applicant, he accepts the application and causes it to be published in the Gazette.
Any person can lodge an opposition with the Director regarding the trademark on payment of the fee within the prescribed time period. The person lodging the opposition has to file it in the form of a notice and state the grounds of opposition.
The applicant has to send to the Director and the opponent a copy of the counter-statement to the opposition along with the grounds on which the applicant has relied. Not filing a counter-statement by the applicant shall be deemed as an abandonment of the application by the applicant.
After receiving the counter-statement, the Director hears both parties and decides whether the mark is supposed to be registered or not. After the publication of the mark and until the registration of the mark, the applicant has the same rights and privileges over the mark which he would have if the mark had been registered.
In case the Director refuses the application, the same shall be notified to the applicant in writing. The applicant has a time period of 6 months from the date of receipt of notification from the Director to make written representations before Director to reconsider the application for the registration of the mark.
Where the applicant fails to make the written submissions within the time period of 6 months, the application for registration of the mark is deemed to have been abandoned. The Director has to inform the applicant about his decisions and the reasons thereof within a period of 1 month from the date of receipt of the written representations from the end of the applicant.
- Registration of the trade mark -
Where the Director is satisfied with the particulars of the application and the application has not been opposed by anyone within the prescribed time limit, or the registration of the mark has been opposed, and such opposition has been decided in favour of the applicant, the Director shall register the mark and publish its details relating to the registration. Finally, the Director issues the applicant a certificate of registration.
Information furnished in the application for Trademark registration in Mauritius
The application for registration of a trademark in Mauritius is submitted to the Director of the Industrial Property Office in the prescribed form, accompanied by the payment of the prescribed fee. Following information is supposed to be furnished at time of filing an application for trade mark registration in Mauritius:
- The representation of the mark
- Where applicable, a statement indicating the type of mark and specifications applicable to that type of mark
- The services/ goods claimed in the mark
- Priority claims, if applicable;
- Name and address of the applicant and such other information that has been prescribed;
- The list of services and goods for which the registration is sought, grouped in accordance with the applicable class or classes as per the NICE classification;
- Details of the legal practitioner appointed or the registered agent appointed; and
- Nationality or place of business of the applicant.
Cost for the registration of Trademarks in Mauritius
The Statutory fee for filing a trade mark application in Mauritius is Mauritian Rupee (MUR) 6000 (approximately USD 135), and the prescribed fee for every additional class filed in application is MUR 2000 (approximately USD 46). It must be remembered that this amount does not include the representative fees. The said payment has to be made to the Government of Mauritius via cheque payable, cash, credit card or debit card.
Renewal of a trade mark in Mauritius
A mark is registered for a period of 10 years, calculated from the filing date of the application for registration. The registration for a mark can be renewed consecutively for a period of 10 years for the end number of times on payment of the applicable fee within the prescribed time period and subject to such conditions that the Director of the Department may determine from time to time.
The fee for renewal of trademarks in Mauritius is MUR 5,000 (approximately USD 1130) for the first class and MUR 2,000 (approximately USD 46) for each additional class.