By Bubacarr D Jaiteh
A trademark is a feature that distinguishes the goods or services of one enterprise from another. Trademarks can be in the form of images, slogans, and word marks, just to mention a few. New trends in the field of Intellectual Property are emerging with the development of technology in the world.
Trademark application is one of the industrial property rights that are filed in large numbers in many IP Offices, and such is the case in The Gambia. The applications filed come mainly from business people and Local IP Agents.
During the past years, little was known in The Gambia about IP and its benefit. This was attributed to a lack of education, in general, and IP awareness, in particular. This challenge is now in the history books as almost every household has either a university student or graduate, therefore, the trajectory is promising. IP is offered as an elective course in the Faculty of Law curriculum at the University of The Gambia, which leaves the writer with the impression that many people believe that IP is only related to law. That is not the case, IP is part and parcel of business because the goods and services that IP protects are all in the chain of commerce and adds value to the goods and services of an enterprise. It is important to highlight that one of the international Agreements common between Trade and IP is Trade-Related to Intellectual Property Rights (TRIPS). This Agreement is used both in international trade and IP, thus, we can appreciate that IP applies to all disciplines.
Trademark in particular is closely connected to business (local or international) as it helps to protect the brand and goodwill that businesses establish, with the protection lasting for a very long time.
The law governing trademarks in The Gambia is the Industrial Property (Amended) Act 2015. Section 27 (1) of the Act provides that an application shall be filed for one to acquire the exclusive right of a mark. This means that the right to a trademark can only be acquired only if an application is filed with the Registrar General’s Office. This is commonly referred to as the “first-to-file” principle. The exemption to this principle is in respect of well-known marks, for which you need not file for a trademark application, protection is guaranteed even without filing. This is subject to appreciation or limitation as provided in a country’s domestic laws. Some countries accord little respect to some of the principles that are provided for International Treaties. Reasons are best known to them, and they are well respected. Some countries appreciate and recognize the “first-to-use” principle.
The prospects of the first-to-file principle in The Gambia is that it gives an absolute right of exclusivity of the mark that was registered in The Gambia. It gives one monopoly to use the mark and one can stop another person who uses the same mark without the consent of the right holder. Businessmen in The Gambia became aware of this principle and started filing for a lot of trademark applications. Some might think that this is done to protect their businesses. Brands indeed get protection by filing for trademark protection. However, one cannot protect a brand that he or she does not own and cannot provide authority for registering the brand in another country.
Recently, there has been a rise in the number of trademark registration from businessmen who are large importers of goods into the country, the majority of which are from Asia. Sometimes an applicant rushes to file for protection of a mark that he or she does not own in bad faith because he or she does not own the mark and does not have authority from the manufacturer. The applicant simply files for trademark protection to block the chances of other competitors from importing the same goods from the same chain of supply into the country. Others tend to rely on the goodwill of a well-known mark and file for protection of the mark in The Gambia.
The IP office as an administrator of IP has the responsibility to ensure compliance with the laws when examining and accepting marks. However, every IPR holder needs to be vigilant of what happens in respect of mark registration. This can be done by purchasing a copy of the Trademark journal that is published in The Gambia government gazette quarterly. This informs the public of marks that were examined, accepted, and about to be registered. It also gives the public window of opportunity, within a specific period, to oppose why a mark should not be registered. If oppositions are filed, they will be assessed, and necessary steps would follow. The majority of the oppositions end up in court. Court pronouncements could also help in shaping a better future for the IP landscape in The Gambia.
There is a recent High Court case between Avon Products Inc (Applicant) and Kaba Dialo (trading as United Business Trading) and Registrar General (1st and 2nd Respondents respectively) HC 381/22/MF/116/F1 (unreported). The plaintiff filed an originating summons and among others sought a declaration from the court that the 1st Respondent is not entitled to register the FAR AWAY mark as proprietor.
The applicant, in this case, was a New York-based company by the name of Avon Products which manufactured FAR AWAY fragrance. The applicant argues that this is one of the best-selling fragrances and is sold in packaging bearing a distinctive design of which it owns the trademark in many countries worldwide. On the other hand, the 1st Defendant is a Gambian-based company. The court in its decision held that the 1st Respondent is not title to be registered as the proprietor of the FAR AWAY mark and ordered the Registrar General to invalidate and expunge the trademark application bearing the 1st Defendant’s name.
The importance of this court’s decision cannot be overemphasized because it sends a warning to would-be applicants who would want to rely on the goodwill of a product that is well known to file for its registration. This is passing off and it amounts to unfair competition within the chain of commerce.
In conclusion, it is highly recommended that owners of brands file for the registrations of their brands to enjoy the protection and also deprive others of using it in the chain of commerce without authority. Yet applicants are discouraged from applying for registration of marks that belongs to another person without authority.
Bubacarr D Jaiteh
Registrar of Industrial Property of The Gambia
- Industrial Property (Amended) Act 2015; and
- Avon Products Inc (Applicant) and Kaba Dialo (trading as United Business Trading) and Registrar General HC 381/22/MF/116/F1 (unreported).