Friday 9 April 2021

Madrid trade mark registrations in Zambia, Lesotho, Sierra Leone and eSwatini not enforceable

International trade mark registrations through the Madrid Protocol System (MPS) do not carry any legal force in Zambia, eSwatini (formerly Swaziland), Lesotho and Sierra Leone.

Zambia, eSwatini, Lesotho and Sierra Leone are all governed by common law systems, under which international agreements need to be ratified under national laws to take force.

While each of these countries has signed on to the MPS, which allows applicants to file a centralised trade mark application that can be extended into most countries around the world, they have not yet updated their national laws to reflect the rights and obligations they have under the MPS. In turn, the registrars in each country reportedly do not examine, or keep a record of, trade marks filed through the MPS.

This means that any trade mark registrations in these countries filed through the MPS are unlikely to be enforceable against infringers. Those registrations could also be vulnerable to cancellation on the basis that they are not valid under the national laws.

If you hold MPS trade mark registrations in Zambia, eSwatini, Lesotho or Sierra Leone, or if you are interested in obtaining trade mark protection in those countries, we recommend filing new national trade mark applications. AJ Park will be happy to assist with any new applications, so please contact us.