TRADEMARKS FILING AND PROSECUTION MAURITIUS
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Mauritius IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Mauritius IP Office. In Mauritius, trademark protection is granted according to the provisions of the Patents, Industrial Designs and Trademarks Act 2002, Mauritius.
Trademark in Mauritius may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different 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.
| Relevant office | The Patents, Industrial Designs and Trademarks Act 2002, Mauritius |
| 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 | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Legalized/Apostilled Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Mauritius
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Mauritius can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Mauritius to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Mauritius.
Filing trademark applications in Mauritius
A person may file multi-class or single class trademark application in Mauritius.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Mauritius
Ordinary trademark applications filed in Mauritius are applications without claiming any priority. Multi class trademark applications may also be filed in Mauritius. 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 Mauritius /Convention trademark applications Mauritius:
A priority trademark application may be filed in Mauritius. A priority trademark application should be filed in Mauritius 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 Mauritius within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Mauritius follows the nice classification of classes. Intellectual property office of Mauritius 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 Mauritius
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
As per section 36 of the act the examination of the mark is carries out on the basis of below mentioned points:
No mark shall be registered, where it-
(a) is incapable of distinguishing the goods or services of one enterprise from those of other enterprises;
(b) is contrary to public order or morality;
(c) is likely to mislead any person, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;
(d) is identical with, or an imitation of, or contains, as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organisation or organisation created by an international convention, unless authorised by the competent authority of that State or organisation;
(e) is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in Mauritius for identical or similar goods or services of another enterprise;
(f) is registered in Mauritius for goods or services which are not identical or similar to those in respect of which registration is applied for, provided, in the latter case, that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and that the interests of the owner of the wellknown mark are likely to be damaged by such use; and
(g) is identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or where it so nearly resembles such a mark as to be likely to deceive or cause confusion.
The Controller may refuse to accept an application for the registration of a mark on which appears-
(a) either the following word “patent”, “patented”, “registered”, “registered design”, “copyright”, or an abbreviation of any these words; or
(b) any representation of the State, or any colourable imitation of these representations.
No mark which contains either-
(a) a representation of the flag of Mauritius;
(b) a representation of the Arms or Seal of Mauritius;
(c) anything resembling any of the representations specified in paragraph (a) or (b);
(d) the word “Mauritius”;
(e) the word “standard”; or
(f) any word or representation, not specified in paragraphs (a) to (e), likely to lead people to believe that the person claiming to be the proprietor of the mark has or recently had authorisation of the Government,
shall be registered except with the authority of the Minister.
Trademark Opposition in Mauritius
Any interested person, within two month from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Mauritius
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 Mauritius
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.