As reported in our Information Letter N.S. 180, an Ordinance for the protection of industrial property entered into effect on December 2, 1992, and we have now been informed that the Patent Office is functioning.
We have been advised that the Ordinance permits owners of issued patents, registered industrial designs and trademarks in effect in Madagascar on December 31, 1976, or which resulted from applications pending on that date, to revalidate such rights. Although the revalidation term officially expired before the Patent Office began functioning, our sources indicate that the term has been unofficially extended until:
December 9, 1994.
A similar extension has also been granted for entry into the national phase for international patent applications designating Madagascar filed under the PCT.
In addition, the Ordinance permits persons, who first used a mark in Madagascar prior to December 2, 1992 and thereafter continued to do so, to file an application claiming priority based on such use, supported by appropriate evidence, provided they do so before:
December 2, 1995.
The principal features of the Ordinance are as follows:
Patents
The provisions of the patent law generally follow the provisions of the European Patent Convention on questions of patentable subject matter and novelty, but include an extra category of subject matter for which no patent may be granted, namely "pharmaceutical, veterinary, cosmetic and food products."
The maximum duration of a patent will be 15 years from the filing date of the application from which it is derived, subject to a possible extension for another five years if the invention is actually worked in Madagascar and the extension is in the national interest. Such an extension may be requested by the patentee or a licensee. Maintenance fees are payable annually on the anniversary of the filing date.
Applications may be filed in either French or Malagasy, but the Patent Office may require translation from whichever language is used into the other. Since Madagascar is a member of both the Paris Convention and PCT, the provisions of these treaties may be invoked in Madagascar applications. Madagascar patents are subject to the possibility of compulsory licensing if the invention is not worked in Madagascar on normal Paris Convention terms. In addition to protection by patents, inventions may also be protected by inventors' certificates of the type formerly granted in the Soviet Union, where the right to use the invention vests in the state.
Designs
The new law also provides for protection of designs. Protection may be secured by registration of any design that is in the form of a "composition of lines or colors or any three-dimensional form" as long as the design can serve to "give a special appearance to a product of industry or handicraft." Protection is initially for a 5-year term, which is renewable for two further 5-year periods.
Trademarks and Trade Names
1) Trademarks, service marks and collective marks may be registered and are granted registration for a period of 10 years from the date of filing of the application. Registrations are renewable for additional 10-year periods.
2) Applications will be examined for inherent registrability and for prior conflicting marks.
3) Inexcusable failure to use a registered mark for a period of 3 years renders the registration vulnerable to cancellation.
4) Assignments and license agreements must be in writing and be recorded in the Special Register of Marks to have effect against third parties.
5) The right of a trademark registrant to bar others from using the mark is exhausted once products bearing the mark are lawfully sold in Madagascar, unless the products have been altered subsequent to their initial sale.
6) After continuous and undisputed use of a mark for at least 3 years, a trademark registration cannot be attacked on the basis of prior use by a third party, unless it can be shown that the trademark registrant could not have been unaware of the third party's mark when he applied for registration.
7) Acts of infringement may constitute criminal offenses, may be punishable by imprisonment and/or fines, and may result in seizure and confiscation of the goods bearing the infringing mark.
8) Rights in a trade name are owned by the party who either first uses or registers the name in Madagascar.
9) Trade names are registrable for a period of 10 years from the date of filing of the application.
10) After continuous and undisputed use for at least 5 years, a trade name registration cannot be attacked on the basis of prior use, unless it can be shown that the trade name registrant could not have been unaware of the third party's trade name when they applied for registration.
In addition, the Ordinance provides a definition of unfair competition which includes the following acts:
1) Making false or deceptive statements concerning the source of goods or services or the identities of their producers or suppliers;
2) Any act liable to cause confusion or deception in relation to a competitor's trade name;
3) False allegations which discredit a competitor;
4) Statements which mislead the public concerning the nature, manufacturing process, characteristics, suitability or quality of goods or services.
June 1994 Index