intellectual property (IP)
BY Pravin Barthia
Mauritius: The industrial property act 2019
This article follows one published in April 2017, on the draft Industrial Property Bill which had been published in the Mauritius Government Gazette. On 30 July 2019, the Mauritius Parliament passed the Industrial Property Bill 2019, which aims to update and strengthen protection of intellectual property rights in a way that is harmonised to meet the challenges of a globalised industry. The Bill received assent from the Interim President of the Republic of Mauritius on 09 August 2019 and was published in the Gazette on 10 August 2019. The Act shall come into operation on a date to be fixed by Proclamation and different dates may be fixed for the coming into operation of different sections of the Act.
As stated in our previous article, the Industrial Property Act 2019 consolidates all industrial property-related issues in one statute. The protection framework of the Act consists of the following five pieces of legislation:
- Patents, Utility Models, Patent Cooperation Treaty;
- Layout-Designs of Integrated Circuits;
- Protection of New Varieties of Plants;
- Industrial Designs governed by the Hague Agreement;
- Marks, Trade Names, Geographical Indications, Madrid Protocol.
Below are some highlights of the Act which may be of interest to national and international rights owners who wish to protect their IP rights in Mauritius and use Mauritius as a platform for the protection of their IP rights globally through the relevant treaties and WIPO agreements.
Patents, Utility Models, Patent Cooperation Treaty
- “Computer programmes” and “known substances for which a new use has been discovered and not applicable to the use itself, where they constitute a patentable invention” have been included in the existing list of matters to be excluded from patent protection;
- It is now possible to object to the grant of a patent;
- Acts performed by any person to make, construct, use or sell the patented invention solely for any use reasonably related to the development and submission of information required under any law of Mauritius or a foreign State that regulates the manufacture, construction, use or sale of any product (International Exhaustion);
- The Act introduces the registration of utility models;
- The existing legislation (The Patents, Industrial Designs and Trademarks Act, 2002) provides for the filing of patent applications under the Patent Cooperation Treaty (PCT). However, this part of the existing Act was never implemented as Mauritius is not party to this treaty. The new Act has again made provision for the filing of patent applications under the PCT. The process of accession to the treaty will be initiated by the Government of Mauritius in due course.
Layout-Designs of Integrated Circuits
The existing legislation provided for the filing of layout-designs. However, this part of the 2002 Act has never been proclaimed. The new Act has again provided for registration of layout-designs under sections 42 to 50.
Protection of New Plant Varieties
The Act introduces the protection of breeder’s right under section 51 to 72
Industrial Designs governed by the Hague Agreement
- Limitations and exceptions in the Act include that no right conferred by the registration of an industrial design shall prohibit “an act, in respect of a product that embodies the industrial design, after the product has been put on the market in Mauritius or abroad by the registered holder or by a person acting with the holder’s consent or having an economic tie to the holder”. (International Exhaustion)
- Registration of an industrial design may be valid for 20 years from the date of filing compared to 15 years currently.
- The Act has made provision for the international filing of industrial designs under the Hague Agreement. The process of accession to the treaty will be initiated by the Government of Mauritius in due course.
Marks, Trade Names, Geographical Indications, Madrid Protocol
- In the case of honest concurrent use, or of other circumstances, the registration of a mark by more than one owner may be allowed, subject to such conditions and limitations as the Authority may determine.
- The prior user of a mark that is neither registered nor the subject of a pending application, may oppose an application for registration by another person of a similar mark for similar goods or services, where he submits evidence of prior use.
- An applicant may divide his application into two or more applications in order to separate the goods or services specified in the initial application. Every divisional application made will retain the filing date and, where applicable, the right of priority of the initial application. After a division, every application will be independent and any publication of the application effected prior to the division shall be effective for each divisional application.
- The rights conferred by the registration of a mark shall not extend to acts in respect of articles which have been put on the market in Mauritius by the registered owner or with his consent. (National Exhaustion)
- Application for the registration of a certification mark will be possible and shall be accompanied by a copy of the agreement governing the use of the mark.
- The 2002 legislation provides for the filing of applications for geographical indications. However, this part of the current Act has never been proclaimed. The new Act makes provision for registration of geographical indications under sections 105 to 114.
- The Act has made provision for the international filing of trade marks under the Madrid Protocol. The process of accession to the Protocol will be initiated by the Government of Mauritius.
Reviewed by Thierry Koenig SA, head of ENSafrica in Mauritius
senior associate | IP
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