TRADEMARKS FILING AND PROSECUTION BOTSWANA
A trademark is a sign that is registered to distinguish a product or service in commerce. Botswana secures intellectual property rights through a structured framework covering trademarks, patents, and industrial designs. Although Botswana is a member state of the African Regional Intellectual Property Organization (ARIPO), it maintains its own procedures for filing and enforcing IP rights within its territory. All applications and registrations are managed by the Companies and Intellectual Property Authority (CIPA), which oversees relevant formalities and exams. Further, trademark protection is granted according to the provisions of Industrial Property Act, 2010.
Apart from this, Botswana has several organizations and legal frameworks dedicated to protecting intellectual property (IP) rights and combating counterfeiting and piracy including Botswana Unified Revenue Service (BURS), Botswana Police Service and Botswana Medicines Regulatory Authority (BOMRA). Botswana’s combination of national and regional integration provides applicants with both local protection and broader regional options.
Trademark in Botswana may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark typically consists of a name, word, phrase, logo, symbol, design, image, or a combination of these elements. A registered trademark grants the owner exclusive rights to use it in relation to the registered goods or services, or to authorize another party to use it in exchange for payment. Trademark protection helps prevent unfair competition, such as counterfeiting, by prohibiting others from using similar or identical marks to market inferior or unrelated products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
IP protection in Botswana can be secured at three levels: national, regional and international.
National -The eight types of IP mentioned above can be protected directly in Botswana through the Companies and Intellectual Property Authority (CIPA).
Regional- Botswana is a contracting party to ARIPO’s Banjul Protocol on Marks and the Harare Protocol on Patents and Industrial Designs. It is therefore possible to register trademarks, patents, utility models and industrial designs either nationally through CIPA or regionally, through ARIPO.
International- Botswana is also a contracting party to the Madrid Protocol, The Hague Agreement and the Patent Cooperation Treaty (PCT). It is therefore possible to register international trade marks and designating Botswana through the Madrid System. Further, Botswana is a contracting party to the Hague System for the international registration of industrial designs, which means that it is possible to register industrial designs through the International Bureau directly in WIPO
| Relevant office | Botswana Intellectual Property Office |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Power of attorney Copy of the priority document (only upon the request of Trademark Office to be submitted) |
| Requirement details for filing | Indication of desire to register Details identifying the applicants Contact address Clear representation of mark Good/ services listed |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years (Grace period to renew after expiration: 6 months with penalty) |
Trademark searches in Botswana
A trademark search in Botswana can be conducted for both word and device. It is advisable to carry out a search prior to filing a trademark application to determine the availability of the mark and to identify any prior identical or similar trademarks on the register. This helps to avoid objections or oppositions during the registration process.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Botswana.
Filing trademark applications in Botswana
A person may file multi-class or single class trademark application in Botswana.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
- International Registration under the Madrid Protocol
Ordinary application in Botswana
Ordinary trademark applications filed in Botswana are applications without claiming any priority. Multi class trademark applications may also be filed in Botswana. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Botswana /Convention trademark applications Botswana:
A priority trademark application may be filed in Botswana. A priority trademark application should be filed in Botswana within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Botswana within six months after the date on which the application was made in the Convention Countries.
International Registration under the Madrid Protocol
Botswana is a member of the Madrid protocol and therefore recognise international registration of trademark. A trademark owner with a national application or registration in Botswana may file an international application through CIPA, which is forwarded to WIPO for formal examination. Further, the international registration is then sent to designated countries for their national examinations.
When Botswana is designated, the international registration is examined in Botswana under relative and absolute grounds for refusal, and if accepted, is published and open o opposition.
Once the mark is registered, the international registration has the same effect as a national registration and is valid for 10 year, renewable through WIPO.
Trademark classes for goods and services
Botswana is not a signatory to the Nice Agreement but uses the Nice Classification. Classifications based on the latest edition of Nice at the time of filing of an application are accepted. Intellectual property office of Botswana uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Botswana
The formal examination of a trademark applications is carried out soon after filing, generally within 1-3 months. If defences are found, the register issues a notices requiring correction in the application. Once this process is completed it process with substantive examination, and a trademark may be refused on the absolute grounds or on relative grounds or well-known marks or conflicts with geographical indications.
Trademark Opposition in Botswana
Any interested person, within 3 months from the date of publication of the mark in the Official Gazette after acceptance, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Botswana
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Renewal in Botswana
You can renew your trademark right by filing a request for renewal twelve (12) months before the trademark right expires, with the grace period to renew after expiration in 6 months with penalty.
Withdrawal of application in Botswana
The withdrawal of an application for a mark shall be made by a written declaration signed by the applicant or his or her authorised agent and submitted to the Registrar. The application fee shall not be refunded if an application is withdrawn.
Trademark Cancellation in Botswana
A registered mark may be subject for a cancellation action by any interested party if it has not been used for 3 consecutive years.