No.

2 Trademarks 1

MALAWI GOVERNMENT

(Published 2nd February, 2018)

Act

No. 2 of 2018

I assent

PROF. ARTHUR PETER MUTHARIKA

PRESIDENT
24 January, 2018

ARRANGEMENT OF SECTIONS
SECTION
PART I__PRELIMINARY
1. Short title and commencement
2. Interpretation

PART II__TRADEMARKS OFFICE

3. Establishment of the Trademarks Office
4. Registrar
5. Appointment of other officers in the Trademarks Office
6. Register

PART III__REGISTRATION OF TRADEMARKS AND CONNECTED MATTERS

7. Application for registration of a trademark
8. Grounds for refusal of registration
9. Advertisement of an application
10. Opposition to an application
11. Registration of a trademark
12. Rights conferred by registration
13. Infringement of a trademark
14. Exhaustion of rights
15. Use of unregistered trademark
16. Registration subject to disclaimer
17. Limitation as to colour and absence thereof
18. Classification of goods and services
2 Trademarks No. 2

SECTION
19. Registration of parts of trademarks and of trademarks as a
series
20. Assignment and transmission of a trademark
21. Associated trademarks to be assignable and transmissible as a
whole
22. Registration of assignment and transmission
23. Registration as licensee
24. Duration of rights and renewals
25. Removal of non-use of a trademark
26. Use of one of associated or substantially identical trademarks
equivalent to use of another

PART IV__RECTIFICATION AND REMOVAL OF ENTRIES IN THE REGISTER

27. Rectification and correction of the Register
28. Removal or variation of registration for breach of condition
29. Alteration of registered trademarks
30. Owner or applicant to be heard before decision is made by
Registrar
31. Evidence of certain entries and documents
32. Requests for information
33. Advertisements to be approved by the Registrar

PART V__INFRINGMENTS AND UNFAIR COMPETITION

34. Infringement of a trademark
35. Remedies for infringement of a trademark
36. Acts of unfair competition

PART VI__WELL KNOWN, COLLECTIVE AND CERTIFICATION MARKS

37. Protection of well known marks
38. Factors for determining well known marks
39. Registration of collective marks
40. Registration of certification marks

PART VII__GEOGRAPHICAL INDICATIONS

41. Application for registration of a geographical indication
42. Acceptance and advertisement of an application
43. Grounds for refusal of registration
44. Registration of geographical indications
45. Rights conferred by registration
46. Infringement of a geographical indication
No. 2 Trademarks 3

SECTION
PART VIII__OFFENCES AND OTHER PROHIBITED ACTS
47. Falsification of entries in the Register
48. False representation of a registered trademark
49. Deceiving or influencing the Registrar
50. Forgery of geographical indications
51. Forgery of a trademark and other prohibited acts
52. Prohibition of sale or importation of goods with forged
trademarks
53. Aiding and abetting commission of offenses outside Malawi
54. Witness giving false evidence
55. Importation of infringing goods
56. Commissioner General may prescribe rules on notice
requirements
57. Commissioner General to disclose information

PART IX__INTERNATIONAL REGISTRATION OF MARKS

58. Treaty arrangements
59. Power to make regulations giving effect to treaties
60. Registration under the Banjul Protocol
61. Registration under the Madrid Protocol

PART X__APPEALS AND OTHER LEGAL PROCEEDINGS

62. Establishment of Appeals Tribunal
63. Infringement or passing off of a trademark
64. Registrar’s original jurisdiction
65. Reference to Tribunal by Registrar
66. Proceedings before the Registrar
67. Power of Registrar to fix time and place
68. Registration to be prima facie evidence of validity
69. Market survey evidence
70. Registrar’s appearance in proceedings
71. Discretion of the Appeals Tribunal
72. Security for costs
73. Power to award and tax costs

PART XI__TRADEMARK AGENTS

74. Trademark agents
75. Trademark agents register
4 Trademarks No. 2

SECTION
PART XII__MISCELLANEOUS
76. Jointly owned trademarks
77. Lodging and authentication of documents
78. Fees
79. Oaths and affirmations
80. Trademarks Journal
81. Regulations
82. Repeal of Cap. 49:01
83. Savings
FIRST SCHEDULE -INTERNATIONAL INSTRUMENTS
TO WHICH MALAWI IS A PARTY
SECOND SCHEDULE -RULES ON CERTIFICATION MARKS
THIRD SCHEDULE -INTERNATIONAL REGISTRATION
OF MARKS UNDER THE AFRICAN
REGIONAL INTELLECTUAL
PROPERTY ORGANIZATION
(ARIPO) BANJUL PROTOCOL ON
MARKS
FOURTH SCHEDULE - INTERNATIONAL REGISTRATION
OF MARKS UNDER THE
PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCER-
NING THE INTERNATIONAL
REGISTRATION OF MARKS

An Act to regulate matters relating to registration and

protection of trademarks, well known marks, collective marks,
certification marks, geographical indications and for matters
connected therewith and incidental thereto.
ENACTED by the Parliament of Malawi as follows__

PART I__PRELIMINARY
Short title and 1. This Act may be cited as the Trademarks Act, 2018 and shall
commencement come into operation on a date appointed by the Minister by notice
published in the Gazette.
Interpretation 2. In this Act, unless the context otherwise requires__
“Appeals Tribunal” means the Appeals Tribunal established
under section 62;
No. 2 Trademarks 5

“Commissioner General” means the Commissioner General of

the Malawi Revenue Authority appointed pursuant to section 3 of
the Malawi Revenue Authority Act; Cap 41:02

“geographical indication” means an indication which identifies

goods or products as originating in the territory of a country,
region or locality in that territory, where a given quality,
reputation or other characteristic of a product is essentially
attributable to its geographical origin and in a case where such
goods are manufactured goods, one of the activities of either the
production or of processing or preparation of the goods
concerned takes place in such territory, region or locality, as the
case may be;
“international instrument” means any convention, treaty,
protocol or agreement between states;
“limitation” means any limitation of the exclusive right to the
use of a trademark given by a person at the time of registration as
owner thereof, including limitations of that right as to mode of
use, and use in relation to goods to be sold or services to be
performed;
“mark” includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral or any combination thereof;
“Register” means the register of trademarks kept pursuant to
section 6;
“register of trademarks agents” means the register of trademark
agents kept pursuant to section 75;
“trademark” means__
(a) any sign or mark which is capable of being represented
graphically; or
(b) in relation to non-visual signs or marks, any sign or mark
that is sufficiently described in a clear, precise, intelligible and
objective manner, and it is capable of distinguishing the goods
or services of one undertaking from those of other
undertakings. and
(c) serve marks
“Trademarks Office” means the Trademarks Office established
under section 3; and
“transmission” means transmission by operation of law,
devolution on the legal representative of a deceased person and
any other mode of transfer not being an assignment.
6 Trademarks No. 2

PART II__TRADEMARKS OFFICE

Establishment 3.__(1) There is hereby established under the direction of the
of the
Trademarks
Minister, an office to be called the Trademarks Office.
Office (2) The Trademarks Office shall have a seal which shall be used
for purposes prescribed under this Act.
Registrar 4.__(1) There shall be appointed a Registrar of Trademarks who
shall be responsible for registration of trademarks and the day to day
management of the Trademarks Office.
(2) The Officer for the time being holding or acting in the office
of the Registrar General shall be the Registrar of Trademarks.
Appointment of 5. There shall be appointed__
other officers in
the Trademarks (a) one or more deputy Registrars of Trademarks who shall,
Office subject to the supervision of the Registrar, have all the powers
conferred by this Act on the Registrar; and
(b) such examiners and other officers as the Minister may
consider necessary for carrying out this Act.
Register 6.__(1) The Registrar shall maintain a Register of trademarks.
(2) The following shall be entered in the Register__
(a) registered trademarks; and
(b) such particulars as may be prescribed for transactions
affecting a registered trademark including renewals, notifications
of assignments and transmissions, names, addresses and
descriptions of all registered users, disclaimers, conditions and
limitations.
(3) Any person may, upon payment of the prescribed fee, and in
accordance with any conditions which may be prescribed, search,
inspect or make a copy or obtain an extract of the Register.

PART III__REGISTRATION OF TRADEMARKS AND RELATED MATTERS

Application 7.__(1) A person shall submit an application for registration of a
for registration trademark to the Registrar in the prescribed form.
of a trademark
(2) Subject to any limitation set out in this Act, the application for
registration of a mark a trademark made pursuant to subsection (1)
shall be signed by an applicant and contain__
(a) a request for registration of the mark as a trademark;
(b) the name and address of the applicant;
(c) the goods or services for which registration is related;
(d) a representation of the mark; and
No. 2 Trademarks 7

(e) a declaration of use or intention to use the mark as a

trademark.
(4) Subject to this Act, the Registrar may__
(a) accept the application without limitations;
(b) accept the application subject to any amendments,
modifications, conditions or limitations as he considers
appropriate; or
(c) refuse to grant the application.
(5) The Registrar shall make a decision in subsection (4) within
thirty days of receiving the application.
8.__(1) A mark shall not be registered as a trademark if it__ Grounds for
refusal of
(a) is incapable of distinguishing goods or services of one registration
enterprise or business from those of another enterprise or
business;
(b) is identical with, or similar to, another registered trademark
or other well known mark whose application for registration as a
trademark was filed prior to the filing date of the application for
the goods concerned which are similar or identical to the goods
covered by the prior application;
(c) consists solely of a mark indicating the common name of
the goods or services for which the application is made;
(d) is contrary to public order or morality;
(e) is likely to mislead the public in particular trade circles, as
regards the geographical origin of the goods or services
concerned, or their nature or characteristics;
(f) is identical to, an imitation of, or contains, as an element,
armorial bearing, flag or other emblem, a name, abbreviation or
initials of, or official sign or hallmark adopted by any state,
inter-governmental organization or organization created by an
international convention, unless the competent authority of that
State or organization has given authorization for such bearing,
flag, emblem, name, abbreviation or initials, official sign or
hallmark to be used by an applicant for a registration of a mark as
trademarks;
(g) is identical to, similar to, or constitutes a translation of, a
trademark or trade name which is well known in Malawi for
identical or similar goods or services of another enterprise, or if
it is well known, and registered in Malawi for goods or services
which are not identical or similar to those in respect of which
registration is applied for__
8 Trademarks No. 2

(i) the use of that 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
(ii) the interests of the owner of the well known mark are
likely to be prejudiced by such use.
Advertisement 9.__(1) Where the Registrar accepts an application for
of an
application
registration of a trademark whether absolutely or subject to
conditions or limitations, the Registrar shall, as soon as possible,
after payment of the prescribed fee, advertise the application in the
prescribed manner.
(2) The advertisement referred to in subsection (1) shall specify
all conditions or limitations subject to which the application is
accepted.
(3) The Registrar may direct that an application be advertised
before acceptance where it appears to him that it is expedient to do
so due to an exceptional circumstance, and where this is to be done,
the Registrar may, if he considers appropriate, direct that the
application be advertised again after it is accepted.
The Advertisement shall be made by notice in the Gazette journal
end in one newspaper of under circulation
Opposition to 10.__(1)Any person may, within thirty days from the date of the
an application advertisement of an application pursuant section 9, give notice to
the Registrar of the person’s opposition to the registration of the
trademark.
(2) The notice of opposition shall be issued in the prescribed form
and shall include a statement of the grounds of opposition.
(3) The Registrar shall send a copy of the notice of opposition to
the applicant and the applicant shall, within thirty days after receipt
thereof, send to the Registrar, in the prescribed manner and time, a
counter-statement stating the grounds on which he relies for his
application.
(4) Where the applicant, without good reason, fails to send the
counter-statement to the Registrar within the prescribed time, the
applicant shall be deemed to have abandoned the application.
(5) If the applicant sends a counter-statement, the Registrar shall
furnish a copy thereof to the person who gave notice of the
opposition.
(6) The Registrar shall call for a hearing of the parties to consider
the evidence for and against registration of a mark as a trademark
and decide whether, and subject to what conditions or limitations, if
any, registration of the mark will be permitted.
No. 2 Trademarks 9

(7) The Registrar shall make a decision regarding the opposition

to registration of a trademark within thirty days from the date of
conclusion of the hearing held pursuant to subsection (6).
11.__(1) When the Registrar accepts an application for Registration
registration of a trademark and either- of a
trademark
(a) the application has not been opposed and the time for notice
of opposition has expired; or
(b) the application has been opposed and the opposition has
been decided in favour of the applicant,
the Registrar shall, unless the Tribunal otherwise directs,
register the trademark, and the registration shall be with effect
from the date of filling the application for registration which shall
be deemed to be the date of registration.
(2) The Registrar shall, on the registration of a trademark and
upon payment of the prescribed fee, issue to the applicant, a
certificate of registration in the prescribed form, and under the seal
of the Trademarks Office.
(3) Where the applicant fails to complete registration processes of
a trademark within twelve months from the date of the application,
the Registrar shall treat the application as abandoned.
12.__(1) On registration of a mark as a trademark, an owner of Rights
the registered trademark shall have the exclusive right to use the conferred by
registration
trademark in respect of the goods or services for which the
trademark was registered.
(2) The rights of the owner shall be effective from the date of
filing of the application for registration.
13.__(1) A registered trademark shall not be infringed by the use Infringement
of another registered trademark in relation to goods or services for of a
which the latter is registered following honest concurrent use of the
trademark

previously registered trademark for a period of five years during

which the owner of the rights in the registered trademark has had
knowledge of such use by the latter.
(2) The following acts shall not constitute infringement of a
trademark__
(a) the use of the trademark by a person in his own name or
address, the name of his place of business, the name of any of his
predecessors in business, or the name of any such predecessor’s
place of business;
(b) the use of the trademark where it is necessary to indicate
the kind, quality, quantity, intended purpose, value, geographical
10 Trademarks No. 2

origin, time of production of goods or, of rendering of services, or

other characteristics of goods or services;
(c) the use of the trademark where it is necessary to indicate the
intended purpose of a product or service, including spare parts or
accessories; or
(d) the importation into, or the distribution, sale in Malawi, of
goods to which the trademark has been applied by or with the
consent of the owner thereof:
Provided that the use is in accordance with honest practices in
industrial or commercial matters.
Exhaustion of 14. The rights conferred by registration of a trademark may not
rights be invoked to prevent a third party from using, in the course of
trade, goods lawfully bearing the trademark after the goods have
been put on the market in Malawi or abroad by the owner or by a
person acting with the owner’s consent or having an economic tie to
the owner:
Provided that the goods and the packaging or wrapping in direct
contact with the goods are not deteriorated or altered.
Use of 15.__(1) An owner or licensee of a registered trademark shall not
unregistered interfere or restrain the use by another person of a trademark
identical to, or nearly resembling the registered trademark which
mark

that other person or predecessor in title has continuously used prior

to the registration of the trade mark.
(2) A person shall not be entitled to institute any proceedings to
prevent or to recover damages for the infringement of an
unregistered trademark, but nothing in this Act shall affect the right
of action against any person for passing off goods or services as the
goods or services of another person or the remedies in respect
thereof.
(3) Where on an application for the registration of a trademark, it
appears to the Registrar that there is an earlier trademark or right in
the Register but the applicant has shown to the satisfaction of the
Registrar that there has been honest concurrent use of the trademark
for which registration is sought, the Registrar shall not refuse to
accept the application by reason of the earlier trademark or right
unless objection on that ground is raised in opposition proceedings
by the owner of that earlier trademark or right.
Registration 16.__(1) If a trademark contains__
subject to
disclaimer (a) a part not separately registered by the owner as a
trademark; or
No. 2 Trademarks 11

(b) a matter common to the trade for which trademark is

associated or otherwise of a non- distinctive character,
the Registrar, or the Appeals Tribunal in the event of an appeal
from a decision of the Registrar, in deciding whether the
trademark shall be entered or remain on the Register, may
require, as a condition of its being on the Register, that the
owner__
(i) disclaim any right to the exclusive use of any such part of
the trademark or to the exclusive use of all or any portion of
such trademark; or
(ii) make such other disclaimer as the Registrar or the
Appeals Tribunal may consider necessary for the purposes of
defining the owner’s rights for purposes of registration.
(2) No disclaimer in the Register shall affect any rights of the
owner of a trademark except such rights as may arise out of the
registration of the trademark, in respect of which the disclaimer is
made.
17.__(1) A trademark may be limited in whole or in part, to one Limitation as
or more specified colours, and in any such case, the fact that there to colour and
is a colour limitation shall be taken into consideration by the absence
thereof
Registrar, or by the Appeals Tribunal in the event of an appeal from
a decision of the Registrar, in deciding on the distinctive character
of the trademark.
(2) Where a trademark is registered without limitation of colour,
it shall be deemed to be registered for all colours.
18.__(1) Goods and services shall, for purposes of registration, be Classification
classified in accordance with the Nice Classification as amended
from time to time.
(2) For purposes of this section__
“Nice Classification” means a classification adopted in the
Nice Agreement Concerning the International Classification of
Goods and Services for the purposes of the Registration of Marks
of June 15, 1957, as revised at Stockholm on July, 14 1967 and at
Geneva on May 13, 1977, and as amended at Geneva on
September, 28, 1979.
19.__(1) Where an owner of a trademark claims to be entitled to Registration
the exclusive use of any part thereof separately, he may apply to of parts of
trademarks
register the whole or any such part, as separate trademarks. and of trade
marks as
(2) Each separate trademark shall satisfy all the conditions, and series
have all the qualities of an independent trademark.
12 Trademarks No. 2

(3) The Registrar may register trademarks as a series in one

registration where a person claims to be the owner of several
trademarks, in respect of the same goods or description of goods or
services, which, while resembling each other in material particulars
thereof, yet differ in respect of__
(a) statements of the goods or services in relation to which they
are respectively used or proposed to be used;
(b) statements of number, price, quality or names of places;
(c) colour; or
(d) other matters of a non-distinctive character which do not
substantially affect the identity of the trademark.
Assignment 20.__(1) An owner of a registered trademark may transmit a
and trademark by assignment, testamentary disposition or operation of
transmission
of a trademark law in the same way as any other personal or moveable property.
(2) A registered trademark shall be also transmissible either in
connection with the goodwill of a business, or independently.
(3) An assignment or other transmission of a registered trademark
may be limited only to apply__
(a) in relation to some, but not all the goods or services for
which the trademark is registered; or
(b) in relation to the use of the trademark in a particular manner
or a particular locality.
(4) An assignment of a registered trademark, or an assent relating
to a registered trademark shall not be effective unless it is in writing
and signed by, or on behalf of, the assignor or a personal
representative, as the case may be.
(5) This section shall also apply to an assignment of a trademark
by way of security.
(6) A registered trademark may be the subject of a charge.
(7) Nothing in this Act shall be construed as affecting the
assignment or other transmission of an unregistered trademark as
part of the goodwill of a business.
Associated 21.__(1) Trademarks that are registered as, or that are deemed to
trademarks to be associated trademarks under this Act, shall be assignable and
be assignable
and transmissible only as a whole and not separately, but they shall for
transmissible all other purposes be deemed to have been registered as separate
as a whole trademarks.
(2) Where a trademark that is registered, or is the subject of an
application for registration in respect of any goods, is identical to
No. 2 Trademarks 13

another trademark that is registered, or is the subject of an

application for registration, in the name of the same owner in
respect of the same goods or description of goods, or so nearly
resembles it as to be likely to deceive or cause confusion if used by
a person other than the owner, the Registrar, may at any time,
require that the trademarks be entered in the Register as associated
trademarks.
(3) Where a trademark and any part thereof are registered as
separate trademarks in the name of the same owner, they shall be
deemed to be, and shall be registered as associated trademarks.
(4) All trademarks that are registered as a series in one
registration shall be deemed to be, and registered as associated
trademarks.
(5) On application made in the prescribed manner by a registered
owner of two or more trademarks registered as associated
trademarks, the Registrar may dissolve the association in respect of
any of the trademarks if he is satisfied that there would be likelihood
of deception or confusion if those trademarks were used by another
person in relation to any of the goods in respect of which the
trademarks were registered and may amend the Register
accordingly.
22.__(1) Where a person becomes entitled to a registered Registration
trademark by assignment or transmission, he shall apply to the of
Registrar to register his title to the trademark.
assignments
and
(2) The Registrar shall, on receipt of the application under transmission

subsection (1) and upon being satisfied with the proof of title,
register the person as the owner of the trademark for the goods or
services in respect of which the assignment or transmission has
effect, and shall cause particulars of the assignment or transmission
to be entered in the Register.
(3) Except for the purposes of an appeal or an application for
rectification under section 27, a document or instrument in respect
of which no entry has been made in the Register in accordance with
subsection (1) shall not be admitted as evidence in any court as
proof of title to a trademark unless the court otherwise directs.
23.__(1) A person may, by agreement with an owner of a Registration
registered trademark, be registered as a licensee in respect of all or as licensee
any goods or services for which the trademark is registered.
(2) A licence in relation to a registered trademark__
(a) shall provide for effective control by the licensor of the
quality of the goods or services of the licensee in connection with
which the trade mark is used; and
14 Trademarks No. 2

(b) may provide for conditions and restrictions to which the

licensee shall comply with (in this Act referred to as the
“permitted use”).
(3) Where the licence does not provide for quality control or
where such quality control is not effectively carried out, the licence
shall not be valid.
(4) The permitted use of the trademark shall be deemed to be use
by the owner for the purposes of section 15 and for any other
purposes for which such use is material under this Act or any other
law.
(5) Subject to any agreement subsisting between parties, a
licensee of a trademark shall be entitled to call upon the owner of
the trademark to take proceedings to prevent infringement of the
trademark and, if the owner refuses or neglects to do so within sixty
days after being so called, the licensee may institute proceedings in
his own name for infringement as if he were the owner of the
trademark and may make the owner a defendant.
(6) Where there is a proposal to register a person as a licensee of
a trademark, the owner and a proposed licensee of the trademark
shall submit a written application to the Registrar in the prescribed
form and with an affidavit or a solemn declaration made by the
owner or by some person authorized to act on his behalf, and
approved by the Registrar__
(a) giving particulars of the relationship existing or proposed
between the owner and the proposed licensee, including
particulars showing the degree of control by the owner over the
permitted use which their relationship will confer and whether it
is a term of their relationship that the proposed licensee shall be
the sole licensee or that there shall be other restriction as to
persons who may be registered as licencees;
(b) stating the goods in respect of which the licence is
proposed;
(c) stating any conditions or restrictions proposed with respect
to the characteristics of the goods, mode or place of permitted use
or to any other matter;
(d) stating whether the permitted use is to be for a period and
duration thereof; and
(c) with such further documents, information or evidence as
the Registrar may require.
(7) The Registrar may register the proposed licensee as a licensee
in respect of the specified goods or services, if after considering the
No. 2 Trademarks 15

information furnished to him under subsection (6), the Registrar is

satisfied that, in all the circumstances, the use of the trademark in
relation to the proposed goods or services by the proposed licensee,
subject to any conditions or restrictions which the Registrar
considers appropriate in the circumstances, would not be contrary to
public interest.
(8) The Registrar shall, if so required by an application, take steps
to ensure that information given for the purpose of an application
under this section, other than matters entered in the Register, is not
disclosed to trade rivals of the applicant.
(10) The registration of a person as a licensee may be__
(a) varied by the Registrar in relation to the goods or services
in respect of which the licence applies or in relation to the
permitted use subject to which the licence was granted, on
application by the owner of the trademark in the in the prescribed
form;
(b) cancelled by the Registrar on the application in the
prescribed form by the owner of the trade mark or by the
licensee of the trade mark; or
(c) cancelled by the Registrar on the application in the
prescribed form by any person on any of the following grounds__
(i) that the licensee has used the trademark otherwise than by
way of the permitted use or in such way as to cause or to be
likely to cause deception or confusion;
(ii) that the owner or the licensee misrepresented or failed to
disclose some material facts in the application for the
registration or that there has been material change in
circumstances since the date of registration; or
(iii) that the registration ought not to have been effected,
having regard to rights vested in the application by virtue of a
contract in the performance of which that person is interested.
(11) The Registrar may, at any time, cancel the registration of a
person as a licensee of the trademark in respect of any goods or
services in respect of which the trademark is no longer registered.
(12) The registration of a collective mark, a geographical
indication or an application thereof, shall not be the subject matter
of a licence.
(13) A licensee of a trademark may only assign or transmit a
trademark with the permission of the registered owner.
16 Trademarks No. 2

Duration of 24.__(1) The registration of a trademark shall be for a period of

rights and ten years but may be renewed from time to time in accordance with
renewals
this section.
(2)The Registrar shall, on application made by the owner of a
registered trademark in the prescribed form, renew the registration
of the trademark for further periods of ten years from the date of
expiry of the registration.
(3) Where a trademark is removed from the Register for failure of
renewal, it shall nevertheless, for the purpose of any application for
the registration of a trademark during a period of six months after
the date of removal, be deemed to be a trademark that is already in
the Register.
(4) Subsection (3) shall not apply where the Registrar or the
Tribunal in the event of an appeal from the decision of the Registrar,
is satisfied either that__
(a) there has been no trade use of the trademark that has been
removed during the three years immediately preceding its
removal; or
(b) no deception or confusion would likely arise from the use
of the trademark that is the subject of an application for
registration by reason of any previous use of the trademark that
has been removed.
(5) The Registrar may, on application by the owner of the
trademark within a period of one year after removal, restore a
trademark the in Register unless if it was not used in the three years
preceding its removal.
Removal of 25. The Registrar may on application by any interested person,
trademark for remove a trademark from the Register if he is satisfied that the
non-use
trademark has not been used in relation to the goods or services for
a continuous period of five years after registration.
Use of one of 26.__(1) Where under this Act, use of a registered trademark is
associated or required to be proved for any purpose, the Registrar, or the Appeals
substantially
identical Tribunal in the event of an appeal from a decision of the Registrar,
trademarks may accept use of an associated registered trade mark, or of the
equivalent to trademark with additions or alterations which do not substantially
use of another
affect the identity, and use of the trademark.
(2) The use of the whole of a registered trademark shall, for the
purposes of this Act, be deemed to be a use of any registered
trademark, being a part thereof, registered in the name of the same
owner.
No. 2 Trademarks 17

PART IV__RECTIFICATION AND REMOVAL OF ENTRIES IN THE REGISTER

27.__(1) An interested party may apply for the rectification of an Rectification
error or omission in the Register. and
correction of
(2) An application for rectification shall be made to the Registrar the Register

except in cases where proceedings concerning a trademark in

question are pending before the Appeals Tribunal and the
consideration, of the application shall await conclusion of the
matters by the Appeals Tribunal.
(3) Where the application is made to the Registrar, the Registrar
may, at any stage of the proceedings, refer the application to the
Appeals Tribunal.
(4) Except where the Registrar or the Appeals Tribunal directs
otherwise, the rectification of an error or omission in the Register
shall be to the effect that the error or omission in question shall be
deemed never to have been made.
(5) The Registrar may, on request made in the prescribed manner
by the owner of a registered trademark, or a licensee, correct any
error or enter any change in a name or address in the Register.
(6) The Registrar may remove from the Register, any matter
appearing to him to have ceased to have effect.
28 The Registrar may, on application by any interested party, Removal or
make such order as he considers appropriate for removal of, or variation
variation in, the registration of a trademark on the ground of any
registration of
a trademark
contravention of, or failure to observe, a condition entered in the for breach of
Register in relation to the registered trademark. condition

29.__(1) The owner of a registered trademark may apply in the Alteration of

prescribed manner, to the Registrar, for leave to alter a trademark registered
in any manner not substantially affecting the identity of the
trademarks

trademark.
(2) The Registrar may grant or refuse leave, or grant the leave on
such terms, and subject to such limitations, as he considers
appropriate.
(3) The Registrar shall advertise the application for alteration
made under subsection (1), in the prescribed manner and if, within
the prescribed time from the date of the advertisement, any person
gives notice to the Registrar in the prescribed manner, of opposition
to the application, the Registrar shall, after hearing the parties, if so
required, make a decision on the matter.
18 Trademarks No. 2

Owner or 30. The Registrar shall, prior to making a decision that may
applicant to be
heard before
affect the rights of the owner or applicant for registration of a
decision is trademark, give the owner or applicant an opportunity to be heard.
made by
Registrar

Evidence of 31.__(1) A certificate purporting to be signed by the Registrar

certain entries certifying that an entry which he is authorized by this Act to make,
has or has not been made, or that any other thing which he is so
and documents

authorized to do has or has not, been done, shall be prima facie

evidence of the matters so certified.
(2) A copy of any entry in any register, or any document kept in
the Trademarks Office, or any trademark or an extract from such
register or document, certified by the Registrar and sealed with the
seal of the Trademark Office, shall be admissible as evidence in any
proceedings without further proof and without production of the
original document.
Request for 32. The Registrar shall, on the request of any person and on
information payment of the prescribed fee, furnish copies of any document
lodged with the Trademarks Office or particulars from the Register
which are open to public inspection or furnish a certificate in respect
thereof.
Advertisements 33. Any advertisement or notice issued under this Act, other
to be approved than a notice issued under the authority of the Minister, shall, before
being published by any person, be in the prescribed form and be
by the Registrar

approved by the Registrar.

PART V__INFRINGEMENT OF TRADEMARKS AND UNFAIR COMPETITION

Infringement of 34. A person who is not an owner of a registered trademark
a trademark infringes the rights of an owner of the registered trademark if he__
(a) affixes the registered trademark or a similar distinctive
sign, on goods or goods associated with the services for which the
trademark was registered, or on containers, wrapping or
packaging of such goods which creates a confusion with regard to
the identity of the goods;
(b) suppresses or distorts, for commercial purposes, the
trademark after it has been affixed on the goods for which the
trademark has been registered;
(c) produces, sells, offers for sale, distributes or stocks labels,
containers, wrapping, packaging or any other material on which
the trademark is reproduced;
No. 2 Trademarks 19

(d) refills or re-uses for commercial purposes, labels,

containers, wrapping, packaging or any other material bearing the
trademark;
(d) uses, in the course of trade, a sign that is identical or
similar to the registered trade mark in respect of any goods or
services, where such use may cause confusion or association with
the registered trademark; or
(f) uses in the course of trade, a sign identical or similar to, the
trademark in respect of any goods or services where such use may
cause unfair__
(i) economic prejudice to the owner through dilution of the
distinctive character or advertising value of the trademark; or
(ii) advantage being taken from the reputation of the
registered trademark or of its holder.
35. Where a trademark registered in terms of this Act has been Remedies for
infringed, a court may grant the owner__ infringement
of a
(a) an injunction; trademark
(b) an order for removal of the infringing mark from all
material or where the infringing mark is inseparable or incapable
of being removed from the material, an order that all such
material be delivered up to the owner;
(c) an order for destruction of any infringing product, article or
product of which the infringing product forms an inseparable
part;
(d) an order for seizure and forfeiture of any material and
implements used in the creation of the infringing goods;
(e) damages, or an account of the profits derived from the
infringement, including expenses incurred in curtailing the
infringement; or
(f) in lieu of damages, at the option of the owner, a reasonable
royalty which would have been payable by a licensee for the use
of the trademark concerned, including any use which took place
after advertisement of the grant of an application for registration
and which, if it took place after registration, would amount to
infringement of the rights acquired by registration.
36.__(1) The Court may, on application by__ Acts of unfair
competition
(a) a right holder protected under this Act;
(b) a competent authority;
(c) an interested person or association; or
(d) an interested producer, manufacturer or trader,grant an
application to prevent an act of unfair competition, award
20 Trademarks No. 2

damages or grant any other remedy as the court may consider

appropriate.
(2) For purposes of this Act, an “act of unfair competition” means
an act which is contrary to honest practices in industrial or
commercial matters.
(3) Notwithstanding subsection (2), the following shall constitute
acts of unfair competition__
(a) any act of such a nature as to create confusion by any means
whatever, with the establishment, goods or the industrial or
commercial activities of a competitor; or
(b) the making of a false allegation in the course of trade of
such a nature as to discredit the establishment, goods, or
industrial or commercial activities of a competitor.
(4) This provision shall apply in addition to provisions on unfair
Cap. 48:09 competition provided in the Competition and Fair Trading Act.

PART VI__WELL KNOWN, COLLECTIVE AND CERTIFICATION MARKS

Protection of 37. The Registrar shall not register a mark registered as a
well known trademark if the mark is identical to, confusingly similar to or
marks
constitutes a translation of a trademark__
(a) or a trade name which is well known in Malawi as the trade
mark of a person other than the applicant seeking registration and
is used for identical or similar goods or services; or
(b) which is registered with respect to goods or services which
are not similar to those with respect to which registration is
applied for:
Provided that__
(i) use of the trademark 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
(ii) the interests of the owner of the well-known mark are
likely to be damaged by such use.
Factors for 38.__(1) In determining whether a trademark is a well known
determining mark, the Registrar shall take into account any circumstances from
well known
marks which it may be inferred that the mark is well known.
(2) Notwithstanding the generality of subsection (1), the
Registrar may consider any of the following factors in determining
whether a trademark is well known__
(a) degree of knowledge or recognition of the mark in the
relevant sector of the public;
No. 2 Trademarks 21

(b) duration, extent and geographical area of any use of the

mark;
(c) duration, extent and geographical area of any promotion of
the mark, including advertising or publicity and the presentation,
at fairs or exhibitions, of the goods or services to which the mark
applies;
(d) duration and geographical area of any registrations or any
applications for registration of the mark to the extent that they
reflect use or recognition of the mark;
(e) record of successful enforcement of rights in the mark, in
particular, the extent to which the mark is recognized as well
known by competent authorities;
(f) commercial value associated with the mark;
(g) degree of inherent or acquired distinctiveness of the mark;
(h) degree of exclusivity of the mark and the nature and extent
of use of the same or a similar mark by third parties;
(i) nature of the goods or services and the channels of trade for
the goods or services that bear the mark; or
(j) degree to which the reputation of the mark symbolises
quality of goods for which the registration is associated.
39.__(1) The Registrar may, on application, register a mark as a Registration
collective mark. of collective
marks
(2) An application for registration of a collective mark shall
designate the mark sought to be registered as a collective mark and
the application shall be accompanied by a copy of rules governing
the use of the mark.
(3) For the purposes of subsection (2), “rules” means the rules
made by a person under whose control the collective mark may be
used.
(4) The registered owner of a collective mark shall notify the
Registrar, in writing, of any changes made in respect of the rules
governing the collective mark within sixty days of such changes
taking place.
(5) Subject to subsections (2), (3) and (4), this Act shall apply to
collective marks and where the term “trademark” is used in the Act,
it shall be construed to include the term “collective mark”.
(6) For purposes of this section, a “collective mark” means a
mark that is capable of distinguishing, in the course of trade, goods
or services of persons who are members of an association from
22 Trademarks No. 2

goods or services of persons who are not members of such

association.
Registration 40.__(1) The Registrar may, on application, register a mark as a
of certification mark as prescribed in the First Schedule hereto.
certification
marks (2) A certification mark shall not be registrable in the name of a
person who carries on a trade in goods or services of the kind
certified.
(3) For purposes of this section, a “certification mark” means a
mark adapted to distinguish, in the course of trade, goods or
services, certified by any person, in respect of origin, material,
mode of manufacture, quality, accuracy and, performance of
services or other characteristic, from goods or services not so
certified.

PART VII__GEOGRAPHICAL INDICATIONS

Application 41. A person may make an application to the Registrar for
for registration of a geographical indication, in the prescribed form
which shall contain__
registration of
a
geographical
indication
(a) a request, in writing, that the geographical indication be
registered;
(b) details of the geographical indication for which registration
is sought;
(c) a description of the geographical area to which the
geographical indication applies;
(d) the particulars or a description of the goods to which the
geographical indication applies;
(k) the quality, reputation or other characteristics of the goods
for which the geographical indication is used;
(l) a certified copy of the rules governing the use of the
geographical indication;
(m) such fees as may be prescribed; and
(n) such other particulars as may be prescribed by the Minister.
Acceptance 42.__(1) Subject to section 43, the Registrar shall, if he is
and satisfied that an application made pursuant to section 41 complies
with the requirements of this Part, accept an application to register
advertisment
of an
application a geographical indication and shall, within such time and in such
manner as may be prescribed, publish that application in the
Journal.
(2) The advertisement shall be in accordance with section 9.
No. 2 Trademarks 23

43. A geographical indication shall not be registered if it is__ Grounds for

refusal of
(a) incapable of distinguishing goods as originating from a registration
particular territory, region or locality or does not possess
characteristics attributed to that territory, region or locality in
which those goods originate from;
(b) contrary to public order or morality;
(c) likely to mislead the public or those in the trade as regards
the geographical origin of the goods concerned, their nature or
characteristics;
(d) in respect of goods, identical with the term usually used in
common language as the common name for such goods in
Malawi;
(e) not protected, has ceased to be protected or has fallen into
disuse in its country of origin; or
(f) identical or similar to an existing registered trademark or
geographical indication that is likely to confuse the public.
44.__(1) Where the Registrar is satisfied that an application for Registration
the registration of a geographical indication satisfies the of
requirements of this Act, and the application has not been opposed
geographical
indications
within the prescribed period, or where it is opposed, the Registrar
decides in the applicant’s favour, the Registrar shall__
(a) register the geographical indication in the Register;
(b) issue to the applicant, a certificate of registration; and
(c) publish in the Journal, a reference to the registration of the
geographical indication.
(2) Where the requirements for the registration of a geographical
indication are not satisfied, or an application for the registration of
a geographical indication is successfully opposed, the Registrar
shall refuse to register the geographical indication.
(3) The Registrar may subject the registration of a geographical
indication to conditions that the Registrar considers appropriate.
45.__(1)The registration of a geographical indication shall give to Rights
the registered owner or authorized user thereof,__ conferred by
registration
(a) the exclusive right to the use of the geographical indication
in relation to the goods in respect of which the geographical
indication is registered; and
(b) the right to obtain relief by way of injunction, award of
damages or any other remedy as the court may consider
appropriate in respect of infringement of the geographical
indication as provided for under this Act.
24 Trademarks No. 2

(2) The exclusive right to the use of a geographical indication

given under subsection (1)(a) shall be subject to any condition or
limitation to which the registration is subject.
(3) Notwithstanding anything contained in any written law, a
right to a registered geographical indication shall not be the subject
matter of assignment, transmission, licensing, pledge, mortgage or
any such other agreement unless it is assigned, transmitted,
licensed, pledged or mortgaged to a producer who will produce the
goods or carry out an activity within the geographical area specified
in the Register and who shall not dilute the characteristic features of
the geographical indication.
Infringement of 46. A registered geographical indication shall be infringed by a
a geographical person who, not being an authorized user thereof,__
indication
(a) uses the geographical indication by any means, in the
designations or presentation of goods that indicates or suggests
that such goods originate from a geographical area other than the
true place of origin of such goods in a manner which misleads the
public as to the geographical origin of such goods even where the
geographical indication used is accompanied by disclaimers or
expressions such as “kind”, “type’, “style”, “imitation” or “the
like”;
(b) uses the registered geographical indication for goods
produced in the geographical area specified in the Register in
respect of the geographical indication not possessing the quality,
reputation or other characteristic specified in the Register; or
(c) uses a geographical indication identifying__
(i) wines for wines, or any such product as may be
prescribed, not originating in the place indicated by the
geographical indication in question; or
(ii) spirits for spirits, or any such product as may be
prescribed, not originating in the place indicated by the
geographical indication in question.
PART VII__OFFENCES AND PENALTIES
Falsification of 47. A person who__
entries in the
Register (a) makes or causes to be made, a false entry in the Register, or
a writing falsely purporting to be a copy of an entry in the
Register; or
(b) produces or tenders, or causes to be produced or tendered
in evidence any such writing,
commits an offence and shall, on conviction, be liable to a fine
of K3,000,000.00 and to imprisonment for five years.
No. 2 Trademarks 25

48.__(1) A person who makes a representation__ False

representation
(a) that a trademark which is not registered, is a registered of a
trademark; registered
trademark
(b) with respect to a part of a registered trademark not being a
part separately registered as a trademark to the effect that it is so
registered;
(c) to the effect that a registered trademark is registered in
respect of any goods or services in respect of which it is not
registered; or
(c) to the effect that the registration of a trademark gives an
exclusive right to the use thereof in any circumstances in which,
having regard to any limitation entered on the register, the
registration does not give such right,
commits an offence and shall, on conviction, be liable to a fine
of K10,000,000 and imprisonment for ten years.
(2) For the purposes of this section, the use in Malawi in relation
to trademark of the word “registered” or of any other word referring,
whether expressly or impliedly, to registration, shall be deemed to
import a reference to registration in the Register, except where the
word__
(a) is used in physical association with other words delineated
in characters at least as large as those in which the word is
delineated, indicating that the reference is to registration as a
trademark under the law of a country outside Malawi, being a
country under the law of which the registration referred to is in
fact in force;
(b) is, being a word other than the word “registered”, of itself
such as to indicate that the reference is to such registration as last
aforesaid; or
(c) is used in relation to a mark registered as a trademark under
the law of another country and in relation to goods to be
exported to that country.
49. A person who__ Deceiving or
influencing
(a) for the purpose of deceiving the Registrar or any other the Registrar
officer in the Trademarks Office, in the implementation of this
Act; or
(b) for the purpose of procuring or influencing the doing or
omission of anything in relation to this Act,
26 Trademarks No. 2

makes or submits a false statement or representation, whether

orally or in writing, knowing the same to be false, commits an
offence and shall, on conviction, be liable to a fine of
K3,000,000.00 and imprisonment for seven years.
Forgery of 50. A person who, knowingly and with intent to deceive,
geographical performs any of the acts referred to in section 47, commits an
offence and shall, on conviction be liable to a fine of K1,000,000.00
indications

in the case of an individual, and imprisonment for five years or to a

fine of K5,000,000.00 in the case of a body corporate.
Forgery of 51.__(1) A person who__
trademarks
and other (a) forges a registered trademark or falsely applies to goods or
prohibited acts in relation to services, any registered trademark or any mark so
nearly resembling a registered trademark so as to be calculated to
deceive;
(b) falsely applies a registered trademark to goods or in relation
to services;
(c) makes a die, block, machine or other instrument for the
purpose of forging, or of being used for forging a registered
trademark;
(d) disposes of, or has in his possession, a die, block, machine
or other instrument, for the purpose of forging, or of being used
for forging, a registered trademark;
(e) without the consent of the owner of a registered
trademark;__
(i) makes, imports or has in his possession, any device for
applying that registered trademark to goods or in relation to
services or representation of that registered trademark;
(ii) makes any reproduction, replica or representation of that
registered trade mark; or
(iii) imports any reproduction, replica, or representation of
that registered trademark otherwise than on goods and services
to which they have been applied; or
(f) makes, imports or has in his possession__
(i) any device for applying to any goods or in relation to any
services, a mark so nearly resembling a registered trademark
that is likely to deceive or cause confusion;
(ii) any reproduction, replica or representation of a mark, so
nearly resembling a registered trademark, that is likely to
deceive or cause confusion, for the purpose of applying it to
goods or in relation to services;
No. 2 Trademarks 27

(iii) any covering bearing a mark so nearly resembling a

registered trademark that is likely to deceive or cause
confusion in relation to goods and services,
commits an offence, and shall, on conviction, be liable to
to a fine of K5,000,000.00 and imprisonment for ten years.
(2) In addition to the penalty in subsection (1), the court shall
order the seizure or destruction of any goods or any instruments
used in the commission of the offence or make an order stopping the
provision of services to which the offence relates.
(3) It shall be a sufficient defence to any charge under subsection
(1)(b) and (c) where an accused person proves that__
(a) in the ordinary course of his business, he was employed on
behalf of other persons__
(i) to make dies, blocks, machines or other instruments for
making or being used in making trademarks;
(ii) to apply trademarks to goods or in relation to services; or
(iii) that in the case which is the subject of the charge, he
was so employed by some other person and was not interested
in the goods or services by way of profit or commission
dependent on the sale of the goods or performance of the
services; or
(b) on request made by a police officer, he gave to the police
officer information in his power with respect to the person on
whose behalf the trade mark was applied.
52.__(1) A person who sells, imports, exports, lets for hire or Prohibition
distributes goods or performs any services to which__ of sale or
importation
(a) a forged registered trademark is applied; or of goods
with forged
(b) a registered trademark is falsely applied, trademarks
commits an offence, and shall, on conviction, be liable to
a fine of K5,000,000.00 and imprisonment for ten years.
(2) It shall be a defence to any charge under subsection (1) if the
person concerned proves that he took all reasonable precautions
against committing an offence under this section, and on request
made by a police officer or customs officer, he gave to the officer all
the information in his possession with respect to the person from
whom he obtained such goods.
53. Any person who, within Malawi, procures, counsels, aids, Aiding and
abets or is accessory to the commission outside Malawi of any abetting
offence which, if committed within Malawi, would be an offence
commission
of offences
under this Part, commits an offence, and shall, on conviction, be outside
liable to a fine of K5,000,000.00 and imprisonment for ten years. Malawi
28 Trademarks No. 2

Witness giving 54. Any person who, wilfully gives false evidence before the
false evidence
Registrar or the Appeals Tribunal in any proceedings knowing such
evidence to be false or not knowing or believing it to be true,
commits an offence, and shall, on conviction be liable to a fine of
K1,000,000 and imprisonment for three years.
Importation of 55.__(1) An owner or licensee of a registered trademark may give
infringing notice in writing to the Commissioner General that he is the owner
or a licensee of a registered trademark.
goods

(2) On receipt of the notice, the Commissioner General shall take

all necessary steps to ensure that imported goods, materials or
articles do not infringe the registered trademark.
(3) When a notice is in force under this section, the importation
of the goods to which the notice relates, otherwise than by a person
for his private and domestic use, is prohibited, but a person shall
not, by reason of the prohibition, be liable to any penalty other than
forfeiture of the goods.
(4) In addition to the notice given under subsection (4), the owner
or licensee of the registered trademark may, from time to time,
inform the Commissioner General that, in relation to the registered
trademark, infringing goods, materials or articles are expected to
arrive in Malawi and in such notice request the Commissioner
General to treat the goods as prohibited goods.
(5) When giving notice under subsection (5), the owner or
licensee shall specify the time and the place where the infringing
goods, materials or articles are expected to arrive in Malawi.
Commissioner 56.__(1) The Commissioner General may in consultation with the
General may Registrar, prescribe rules on the form in which notice is to be given
under section 55 and require a person giving notice to__
prescribe rules
on notice
(a) furnish the Commissioner General with such information or
requirements

evidence as may be specified in the rules when giving notice

under section 55; and
(b) comply with such other conditions as may be specified in
the rules.
(2) The rules made pursuant to subsection (1) may, in particular,
require a person giving the notice to__
(a) furnish sufficient information and particulars of a
trademark;
(b) pay such fees in respect of the notice as may be specified
by the rules;
No. 2 Trademarks 29

(c) give such security as may be so specified in respect of any

liability or expense which the Commissioner General may incur
in the process of protecting the trademark; or
(d) indemnify the Commissioner General against any such
liability or expense, whether security has been given or not.
57. Where the Commissioner General or officer who exercises Commissioner
functions in relation to imported goods obtains information relating General to
to infringing goods, material or articles, the Commissioner General disclose
information
may authorize the disclosure of that information for the purpose of
facilitating the exercise, by any authorised person, of any function
in connection with the investigation or prosecution of an offence
under this Act.
PART IX__INTERNATIONAL REGISTRATION OF TRADEMARKS
58. Where Malawi ratifies or accedes to any international Treaty
instrument relating to trademarks, the Minister shall, by notice arrangements
published in the Gazette, declare that Malawi has become a member
to a particular instrument with effect from the date stated in such
notice and shall list the international instrument in the Second
Schedule hereto.
59. The Minister may make regulations for the procedures Power to
relating to registration of trademarks under international make
regulations
instruments to which Malawi is a Party. giving effect
to treaties
60. Registration of trademarks in Malawi pursuant to the Banjul Registration
Protocol shall be made in accordance with the Third Schedule under the
hereto.
Banjul
Protocol
61. Registration of trademark in Malawi pursuant to the Madrid Registration
Protocol, shall be made in accordance with the Fourth Schedule under the
hereto.
Madrid
Protocol

PART X__APPEALS AND OTHER LEGAL PROCEEDINGS

62.__(1) There is hereby established an Appeals Tribunal which Establishment
shall hear appeals from decisions of the Registrar. of Appeals
Tribunal
(2) The Appeals Tribunal shall be presided over by a single Judge
appointed by the Chief Justice.
(3) The Appeals Tribunal shall develop its own rules but where
such rules are not developed, the Appeals Tribunal shall apply the
rules of the High Court Commercial Division.
(4) Any person aggrieved by a decision of the Registrar under this
Act may, within thirty days of such decision, lodge an appeal with
the Appeals Tribunal.
30 Trademarks No. 2

(5) If a person is further aggrieved by the decision of the Appeals

Tribunal, he may within twenty one days, appeal to the Supreme
Court of Appeal.
Infringement 63. Any action or legal proceeding relating to the infringement
or passing off or passing off of a trademark shall be presided over by the
of a trade
mark Commercial Division in the High Court.
Registrar’s 64. Where an applicant wishes to make an application under
original any provisions of this Act, the application shall first be made to the
jurisdiction
Registrar.
Reference to 65. Where the Registrar determines that any matter to be
Appeals decided by him under this Act involves a point of law or is of
Tribunal by
Registrar unusual importance or complexity, he may, after giving notice to the
parties, refer the matter to the Appeals Tribunal for a decision and
shall thereafter, in relation to the matter, act in accordance with the
decision of the Appeals Tribunal or any decision substituted
therefor, on appeal to the Supreme Court.
Proceedings 66.__(1) Subject to section 70, evidence in any proceedings
before the before the Registrar under this Act, shall be given by affidavit but
Registrar
the Registrar may, if he considers it appropriate in any particular
case, take oral evidence as aforesaid in lieu of, or in addition to,
such evidence as aforesaid and may allow any witness to be
cross-examined on his affidavit or oral evidence.
(2) The powers, rights and privileges of the Registrar in
proceedings before him under this Act shall be the same as those
Cap. 18:01 conferred upon commissioners by the Commissions of Inquiry Act
and sections 9, 10 and 12 of that Act and the regulations made
pursuant to the Act shall apply mutatis mutandis, to a hearing and
determination of any matter before the Registrar under this Act and
to any person summoned to give evidence or giving evidence before
him.
(3) A party may, in any proceedings before the Registrar under
this Act, be represented by a legal practitioner.
Power of 67. The Registrar may, in any proceeding before him decide the
Registrar to time and places at which he will sit and he may adjourn any
fix time and
place proceedings for such time and to such place as he considers
appropriate.
Registration 68. In any legal proceeding relating to a registered trademark,
to be prima the fact that a person is registered as owner of the trademark shall
facie
evidence of be prima facie evidence of the validity of the original registration of
validity the trademark and of all subsequent assignments and transmissions
thereof.
No. 2 Trademarks 31

69. In any legal proceeding relating to a trademark or trade Market

name, the Appeals Tribunal or the Registrar, shall admit evidence of survey
evidence
the usages of the trademark concerned and of any relevant
trademark or trade name or get-up legitimately used by other
persons.
70.__(1) In any legal proceeding in which the relief sought Registrar’s
includes alteration or rectification of the Register, the Registrar shall appearance in
have the right to appear and be heard in such proceedings, and shall
proceedings

appear if so directed by the Appeals Tribunal.

(2) Unless otherwise directed by the Appeals Tribunal, the
Registrar, in lieu of appearing and being heard, may submit to the
Appeals Tribunal, a statement in writing signed by him, giving
particulars of the__
(a) proceedings before him in relation to the matter in issue;
(b) the grounds for any decision given by him in relation to that
matter;
(c) the practice of the Trademarks Office in like cases; or
(d) such other matters relevant to the issues, and within his
knowledge as Registrar, as considers appropriate,
and the statement shall be deemed to form part of the evidence in
the proceeding.
71. In any appeal from a decision of the Registrar to the Discretion of
Appeals Tribunal, the Appeals Tribunal shall in adjudicating on the the Appeals
matter, have and exercise the same discretionary powers as are
Tribunal

conferred upon the Registrar under this Act .

72.__(1) When an appellant or a party to proceedings before the Security for
Registrar or the Appeals Tribunal is resident outside Malawi, the costs
Registrar or the Appeals Tribunal may direct the appellant or party
to give security, within such time as may be directed, for the costs
of the proceedings or appeal.
(2) If the appellant or a party is ordered to give security for costs
and fails to do so within the time directed, the Registrar or the
Appeals Tribunal may treat the proceedings or appeal as abandoned.
(3) Where a bond is to be given as security for costs, it shall,
unless the Registrar or the Appeals Tribunal otherwise directs, be
given to the party requiring the security.
(4) Unless otherwise agreed between the parties, any costs
awarded in terms of section 73 shall be taxed by the Registrar of
Trademarks in accordance with rules made under this Part.
32 Trademarks No. 2

(5) The taxation shall be subject to appeal to the Appeals

Tribunal, and any such costs may be recovered by action in a court
of competent jurisdiction.
Power to 73.__(1) In all proceedings before the Registrar under this Act,
award and tax the Registrar shall have power to award to any party, such costs as
he may consider reasonable and to direct how the payment is to be
costs

made.
(2) Any costs awarded by the Registrar shall be taxed by the
Registrar and payment thereof may be enforced in the same manner
as if they were costs allowed by the Appeals Tribunal.

PART XI__TRADEMARK AGENTS

Trademark 74.__(1) Subject to subsection (2), where an act has to be done
agents under this Act by a person in connection with the registration of a
trademark, geographical indication, collective mark, certification
mark or of any other thing which may be done under this Act, such
person may either do it himself or through a trademark agent.
(2) Where an applicant’s ordinary place of residence or principal
place of business is outside Malawi, he shall be represented by a
trademark agent resident and entitled to act as such in Malawi.
(3) A person shall be qualified to act as a trademark agent if the
person is resident in Malawi and__
(a) is a legal practitioner entitled to practice in the High Court
of Malawi; or
(b) is admitted to practice as a trademark agent before the
Institute of Patents and Trademark Agents of Malawi.
Trademark 75.__The Registrar shall keep a register of trademark agents in
agents
register
Malawi and may remove from the register of trademark agents, the
name of any trademark agent upon proof to the Registrar’s
satisfaction, that the trademark agent has__
(a) died;
(b) become of unsound mind;
(c) been adjudged or otherwise declared bankrupt or insolvent
under any law, or has made an assignment to or composition with
his creditors;
(d) ceased to reside or maintain a place of business in Malawi;
(e) applied for his name to be so removed from the register;
(f) been convicted, in Malawi or elsewhere, of an offence and
sentenced to serve a term of imprisonment without the option of
a fine, whether such sentence is suspended or not; or
No. 2 Trademarks 33

(g) having been entitled to practise as a trademark agent, has

ceased to be so entitled, or to practice as such.

PART XII__MISCELLANEOUS
76.__(1) Where the relations between two or more persons Jointly owned
interested in a trademark are such that none of them is entitled, as trademarks
between himself and the other, or others, to use it except__
(a) on behalf of both, or all of them; or
(c) in relation to an article with which both or all of them are
connected in the course of trade,
those persons may be registered as joint owners of the
trademark, and this Act shall have effect in relation to any rights
to the use of the trademark vested in those persons as if those
rights had been vested in a single person.
(2) Subject to subsection (1), nothing in this Act shall authorize
the registration of two or more persons who use a trademark
independently, or propose so to use it, as joint owners thereof.
77.__(1) Any application, notice or document authorized or Lodging and
required under this Act to be lodged, made or given at the authentication
of documents
Trademarks Office, the Registrar or any other person, may be
delivered by hand, sent electronically or by registered post.
(2) The Minister may make regulations for the lodging and
authentication of documents sent electronically.
78.__(1) Where under this Act, a fee is payable in respect of__ Fees

(a) performance of any act by the Registrar, the Registrar shall

not perform that act until the fee has been paid;
(b) doing of any act by any person other than the Registrar, the
act shall be deemed not to have been done until the fee has been
paid; or
(c) lodging of a document, the document shall be deemed not
to have been lodged until the fee has been paid.
(2) All fees shall be paid at the Trademarks Office in such
manner as the Registrar, with the approval of the Minister, may
prescribe.
79. Any person who is required under this Act to take any oath Oaths and
or swear to the truth of any affidavit may, in lieu thereof, make an affirmation
affirmation or declaration in accordance with the Oaths,
Affirmations and Declarations Act. Cap 4:07
34 Trademarks No. 2

Trademarks 80.__(1) The Registrar shall publish the Trademarks Journal at

Journal least once every month.
(2) When publishing the Trademarks Journal, the Registrar shall
ensure that the Journal uses Internationally Agreed Numbers for
Identification of Data.
(3) The Trademarks Journal shall contain the following
information__
(a) particulars of applications for registration of trademarks;
(b) particulars of applications accepted by the Registrar;
(c) rulings made by the Registrar;
(d) notices of opposition to trade mark applications; and
(e) any other matters arising under this Act.
(4) The Registrar shall sell copies of the Trademarks Journal at
such price and in such a manner as the Minister may prescribe.
Regulations 81.__(1) The Minister may make regulations prescribing
anything which, under this Act is to be prescribed and generally, for
the implementation of this Act.
(2) Notwithstanding the generality of subsection (1), regulations
made by the Minister may provide for__
(a) the service of documents;
(b) classification of goods or services for the purposes of
registration of trademarks;
(c) prohibition of the registration of any mark on the grounds
of morality, public policy or other good and sufficient reason;
(d) making or requiring duplicate representations of
trademarks and other documents;
(e) security and regulation of the publication and sale or
distribution of copies of trademarks and other documents;
(f) fees which may be charged in relation to the conduct of
trademark business by trademark agents;
(g) the professional conduct of trademark agents;
(h) the notification of the registration of a person as a licensee;
(i) procedures for the international registration of trademarks;
and
(h) the business of the Trademarks Office.
No. 2 Trademarks 35

(3) The Minister shall also prescribe fees which shall be payable
in respect of any application, registration and other matters under
this Act and the fees shall be payable as so prescribed.
(4) Notwithstanding section 21 of the General Interpretation Act, Cap. 1:01
regulations made pursuant to this section may provide for offences
whose penalties may not exceed a fine of K1,000,000.00 and Cap 1:01
imprisonment for three years.
82. The Trademarks Act is hereby repealed. Repeal of
Cap. 49:01

83.__(1) Trademarks registered under the repealed Trademarks Savings

Act shall remain in force until their expiry and shall be deemed to
have been registered under this Act.
(2) Trademarks already registered and due for renewal shall, on
renewal, be reclassified in accordance with international
classification as provided under this Act.
(3) The Registrar may, in case of trademarks registered in Part B
of the Register under the repealed Trademarks Act, and on
application by the owner of such trademark and who, having shown
that the mark has acquired distinctiveness through use, register that
mark in the Register.
(4) Any regulations made under the repealed Trademarks Act
shall, unless inconsistent with the provisions of this Act, remain in
force and shall have the same effect as if they were made under this
Act.
(5) Any document referring to any provision of the repealed
Trademarks Act shall be construed as referring to the corresponding
provision of this Act.

FIRST SCHEDULE s.40

CERTIFICATION MARKS RULES

ARRANGEMENT OF RULES
PARAGRAPHS
1. Application for registration
2. Submission of draft rules
3. Rules to indicate use of certification marks
4. Acceptance of rules
5. Factors to be considered on registration of certification marks
6. Certification marks not to be registered in certain cases
7. Advertisement of an application
36 Trademarks No. 2

PARAGRAPHS

8. Certification mark not to be registered without rules

9. Alteration of rules
10. Alteration of rules to be advertised
11. Variation of rules
12. Registrar with no authority to award costs for refusal for use
of certification mark
13. Certification mark not assignable
14. Revocation of certification mark
Application 1. An application for the registration of a certification mark
for
registration
under section 40 shall be made in writing in the prescribed form to
the Registrar by a person proposed to be registered as the owner
thereof.
Submission 2. On application, an applicant for the registration of a
of draft rules certification mark under section 40 shall transmit to the Registrar,
draft rules for governing the use thereof at such time, as the
Registrar may require in order to enable him to consider the draft,
before the Registrar makes a decision on the application.
Rules to 3. The rules submitted pursuant to paragraph 2, shall
indicate use
of
indicate;__
certification (a) persons authorized to use a mark;
marks
(b) the characteristics to be certified by the mark;
(c) how a certifying body is to test those characteristics and to
supervise the mark;
(d) the fees, if any, to be paid in connection with the operation
of the mark; and
(e) the procedure for resolving disputes relating to the mark..
Acceptance 4. The Registrar may refuse an application or may accept it and
of rules approve the rules in whole, or subject to any conditions, limitations,
amendments or modifications of the application of the rules, which
he considers appropriate.
Factors to be 5. In dealing with an application under section 40, the
considered on Registrar, or the Appeals Tribunal in the event of an appeal from a
decision of the Registrar, shall have regard to like consideration, so
registration of
certification
marks far as relevant, as if the application were an application made under
section 7 and to any other considerations relevant to applications
under section 40, including the desirability of securing that a
certification mark shall comprise some indication that it is such a
certification mark, and including whether__
No. 2 Trademarks 37

(a) the applicant is competent to certify the goods in respect of

which the mark is to be registered;
(b) the draft rules comply with paragraph (3) and are not
contrary to public policy or morality; and
(c) in all circumstances, the registration applied for would be
in the public interest.
6. A certification mark shall not be registered if the owner Certification
carries on a business involving the supply of goods or services of marks not to
be registered
the kind certified. in certain
cases

7. When an application has been accepted, the applicant shall, Advertise-

as soon as possible thereafter, advertise the application as accepted ment of an
in the prescribed manner, and section 9 shall have effect in relation
application

to the registration of the mark as if the application had been an

application under section 7.
8. A certification mark shall not be registered unless the Certification
regulations governing the use of the mark have been deposited mark not to
be registered
together with the application to register the mark without
regulations

9. The rules deposited in respect of a certification mark may, on Alteration of

application by the registered owner, be altered by the Registrar. rules

10. The Registrar may direct that an application for an alteration Alteration of
under rule 9 shall be advertised in any case where it appears to him rules to be
advertised
that it is expedient so to do, and where an application has been so
advertised, if within the prescribed time from the date of the
advertisement, any person gives notice to the Registrar of
opposition to the application, the Registrar shall not decide the
matter without giving the parties an opportunity to be heard.
11. On application, in the prescribed form by any aggrieved Variation of
person or on his own motion, the Registrar may make such order as rules
he considers appropriate for removing or varying any entry in the
Register relating to a certification mark or for varying the deposited
rules on the ground that__
(a) the owner is no longer competent, in the case of any of the
goods or services in respect of which the certification mark is
registered, to certify those goods or services;
(b) the owner has failed to observe a provision of the
deposited rules;
(c) it is no longer to the public interest that the certification
mark should be registered; or
38 Trademarks No. 2

(d) that it is requisite for the public interest that, if the

certification mark remains registered, the rules should be varied.
Registrar with 12. Notwithstanding anything in section 73, the Registrar shall
no authority not have any jurisdiction to award costs to, or against any party on
an appeal to him against a refusal of the owner of a certification
to award
costs for
refusal of use mark to certify goods or services or to authorize the use of the trade
of trade mark mark.
Certification 13. A certification mark shall not be assignable or
mark not transmissible otherwise than with the consent of the Registrar
assignable

Revocation of 14. The registration of a certification mark may be revoked on

certification the ground that__
mark
(a) the owner has began to carry on a business involving the
supply of goods or services of the kind certified;
(b) the manner in which the certification mark has been used
by the owner has caused it to become liable to mislead the public
by its character or significance, in particular, if it is likely to be
taken as something other than a certification mark;
(c) the owner has failed to observe or to secure the observance
of the rules governing the use of the certification mark;
(d) an amendment of the rules has been made so that the rules
no longer comply with paragraph 3 or are contrary to public
policy or morality; or
(e) the owner is no longer competent to certify the goods or
services for which the mark is registered.

SECOND SCHEDULE s. 58
INTERNATIONAL INSTRUMENTS TO WHICH MALAWI IS A PARTY
1. The Banjul Protocol on Marks Within the Framework of the
African Regional Intellectual Property Organization (ARIPO),
as revised from time to time.
2. The Paris Convention for the Protection of Industrial Property,
as revised from time to time.
3. The Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks, as revised from time to time.
4. The Vienna Agreement Establishing the Classification of the
Figurative Elements of Marks as revised from time to time.
5. The Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks.
No. 2 Trademarks 39

THIRD SCHEDULE s. 60
INTERNATIONAL REGISTRATION OF MARKS UNDER THE AFRICAN REGIONAL
INTELLECTUAL PROPERTY ORGANIZATION (ARIPO) BANJUL PROTOCOL ON MARKS
PARAGRAPHS
1. Interpretation
2. Application for registration
3. Verification of particulars in application
4. Examination of application
5. Notification of designation for registration and refusal
6. Publication of acceptance of registration of a mark and
opposition
7. Cancellation of registration
8. Form and procedure for registration to be in accordance
with regulations
1. In this Schedule, unless the context otherwise requires__ Interpretation

“ARIPO Journal” means the Journal published by the Office;

“Office” means the African Regional Intellectual Property
Organization (ARIPO); and
“Protocol” means the African Regional Intellectual Property
Organization (ARIPO) Banjul Protocol On Marks.
2.__(1) All applications for the registration of a mark under the Application
Protocol shall be filed either directly with the Office or with the for
Trademarks Office.
registration

(2) Where an application is filed with the Trademarks Office, the

Trademarks Office shall transmit the application to the Office
within thirty days of receiving the application.
(3) An applicant shall be represented by a trademarks agent where
an application is filed with the Trademarks Office but the
applicant’s principal place of business or ordinary residence is not
in Malawi.
3.__(1) The application made pursuant to paragraph 2 shall Verification
indicate the goods or services in respect of which protection of a of particulars
mark is claimed, including the corresponding class or classes
in application

provided for under the Nice Agreement Concerning the

International Classification of Goods and Services for the Purposes
of the Registration of Marks.
(2) The Trademarks Office shall check that the applicant has
made an indication of the class or classes and that indication is
correct and where the applicant does not give such indication or the
40 Trademarks No. 2

indication is not correct, the Office shall classify the goods or

services under the appropriate class or classes of the Nice
Agreement on payment of a classification fee.
Examination of 4. An application for registration of a mark in which Malawi is
application a designated state shall be examined in accordance with this Act.
Notification of 5.__(1) Where the Trademarks Office is notified that Malawi is a
designation for designated state, the Trademarks office may, before the expiration
registration and
refusal of twelve months from the date of the notification, make a written
communication to the Office that, that if a mark is registered by the
Office, that registration shall have no effect in Malawi on the basis
of any grounds, both absolute and relative, including the existence
of third party rights.
(2) Where the Trademarks Office makes the notification under
subparagraph (1) it shall give reasons for the refusal.
(3) The Trademarks Office shall give an applicant an opportunity
to respond to the communication in subparagraph (1) and accord the
applicant an opportunity to be heard on appeal in accordance with
Part X of the Act.
Publication of 6.__(1) An application in which Malawi is a designated state
acceptance of which is accepted by the Trademarks Office shall be registered by
the Office and published as accepted by Malawi in the ARIPO
registration
of a mark and
opposition Journal.
(2) Any person may, after the publication under subparagraph (1)
but before the registration of a mark, give a notice of opposition to
the application for registration in Malawi.
(3) The opposition made under subparagraph (2) shall be in
accordance with section 10 of the Act.
4) The Trademarks Office shall transmit to the Office, an
opposition made at any time after publication of a mark in the
Marks Journal where Malawi is designated, but before registration.
(5) The opposition to the application made pursuant to
subparagraph (4) shall be in accordance with section 10 of the Act.
Cancellation of 7.__(1) Section 9 shall apply on cancellation of a registration of
registration a mark in Malawi whether based on non-use or any other grounds.
(2) Where registration has been cancelled, the Trademarks Office
shall, within one month of cancellation, notify the Office which
shall publish this fact in the ARIPO Journal.
Procedure for 8. All other procedures relating to the process of registration of
registration a mark where Malawi has been designated shall be in accordance
with the regulations made by the Administrative Council.
No. 2 Trademarks 41

FOURTH SCHEDULE s. 61
INTERNATIONAL REGISTRATION OF MARKS UNDER THE PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
PARAGRAPHS

PART 1__PRELIMININARY
1. Interpretation
2. Language of communication
PART II__APPLICATION FOR INTERNATIONAL REGISTRATION
3. Application and examination of international application in
respect of which the Trademarks Office is the office of
generation
4. Verification of particulars in an application
5. Certification
6. Handling fee
7. Ceasing of effect of basic application or basic registration
PART III__INTERNATIONAL REGISTRATION IN RESPECT OF WHICH
MALAWI IS DESIGNATED AS A CONTRACTING PARTY
8. Statement of grant of protection
9. Provisional refusal of protection
10. Advertisement and opposition of application
11. Provisional refusal based on an opposition
12. Final decision following notification of a provisional refusal
13. Further decision affecting protection of a mark
14. Effect of international registration
15. Invalidation of international registration
16. Recordings in the International Register
17. Collective and certification marks
18. Replacement of registration
19. Transformation
20. Regulations on the international registration of marks
21. Conflict between this Act and the Madrid Protocol

PART 1__PRELIMININARY
1. In this Schedule, unless the context otherwise requires__ Interpretation
“applicant” means a natural person or legal entity in whose
name an international application is filed;
“basic application” means an application for registration of a
mark, filed with the Registrar under the Act, and which is used as
42 Trademarks No. 2

a basis for the filing of an international application under the

Madrid Protocol;
“basic registration” means a mark registered by the Registrar
under this Act, and which is used as the basis for the filing of an
international application under the Madrid Protocol;
“Common Regulations” means the Common Regulations
under the Madrid Agreement and the Madrid Protocol
promulgated by the World Intellectual Property Organization
(WIPO);
“Contracting Party” means any country or intergovernmental
organization which is a party to the Madrid Protocol or any
country party to both the Madrid Agreement and the Madrid
Protocol;
“designated Contracting Party” is the Contracting Party to the
Madrid Protocol that is designated in the international application
or in the subsequent designation;
“holder” means a natural person or legal entity in whose name
an international registration is recorded in the International
Register;
“International application” means an application to obtain
registration of a mark under the Madrid Protocol filed through the
Trademarks Office as the Office of origin;
“International Bureau” means the International Bureau of
WIPO;
“international registration” means a trade mark registration
effected under the Madrid Agreement or the Madrid Protocol or
both, as the case may be;
“International Register” means the official collection of data
concerning international registrations of marks maintained by the
International Bureau;
“invalidation” means a decision by the competent authority,
whether administrative or judicial, of Malawi revoking or
cancelling the effects, in the territory of Malawi, of an
international registration with regard to all or some of the goods
or services covered by the designation of Malawi;
“Madrid Agreement” means the Madrid Agreement
Concerning the International Registration of Marks of April 14,
1891, as revised at Stockholm on July 14, 1967, and amended on
September 28, 1979;
No. 2 Trademarks 43

“Madrid Protocol” means the Protocol Relating to the Madrid

Agreement Concerning the International Registration of Marks,
adopted in Madrid, Spain, on June 27, 1989;
“office of origin” means the intellectual property office of a
Contracting Party where the international application was filed;
“subsequent designation” means the request for extension of
protection (“territorial extension”) under Article 3ter(2) of the
Madrid Protocol and includes such designation as recorded in the
International Register, and “WIPO” means the world intellectual
property organisation.
2. Any communication, including an international application, Language of
for transmission to the International Bureau through the office of the communicatio
n
Registrar, shall be in English.

PART II__APPLICATION FOR INTERNATIONAL REGISTRATION

3.__(1) A person seeking international registration of a Application
trademark, shall file a basic application with the Registrar for and
transmittal to the International Bureau. examination
of
international
(2) Where an international application is filed with the Registrar applications
for transmittal to the International Bureau, the Registrar shall verify in respect of
that the Trademarks Office be considered as the office of origin in which the
Trademarks
respect of that application, and that the relevant particulars Office is the
appearing in the international application correspond to the relevant office of
particulars appearing in the basic application or basic registration, origin
as the case may be, in accordance with the provisions of the Madrid
Protocol and the Common Regulations.
4.__(1) Where an international application is filed with the Verification
Trademarks Office for transmission to the International Bureau, the of particulars
in an
Trademarks Office shall verify that Malawi qualifies as the country application
of origin under the Madrid Protocol in respect of that application,
and that the particulars appearing in the international application
corresponds to the relevant particulars appearing in the basic
application or basic registration, as the case may be, in accordance
with the provisions of the Madrid Protocol and the Common
Regulations.
(2) Where the international application complies with the
prescribed requirements, the Trademarks Office shall so certify in
the application indicating the date on which it was received, and
shall, upon payment of the prescribed handling fee by the applicant,
forward the application to the International Bureau.
44 Trademarks No. 2

(3) Where the international application does not meet the

prescribed requirements, the Trademarks Office shall not forward it
to the International Bureau, and shall inform the applicant
accordingly.
Certification 5.__(1) Where an international application complies with the
prescribed requirements, the Registrar shall certify the international
application, indicating the date on which the international
application was received, and shall forward the international
application to the International Bureau.
(2) Where the international application does not comply with the
prescribed requirements, the Registrar shall not forward the
international application to the International Bureau, and shall
inform the applicant accordingly.
Handling fee 6. An applicant shall pay the prescribed handling fee to the
Registrar for the certification and transmittal to the International
Bureau of an international application originating in Malawi.
Ceasing of 7. Where, in accordance with Article 6 of the Madrid Protocol,
effect of basic a basic application the registration resulting from such application,
or basic registration, ceases to have effect, the Registrar shall inform
application or
basic
registration the International Bureau accordingly and shall request the
cancellation of the international registration in respect of the goods
and services affected.
PART III__INTERNATIONAL REGISTRATION IN RESPECT OF WHICH
MALAWI IS A DESIGNATED CONTRACTING PARTY
Statement of 8. Where an application for international registration of a
grant of trademark is received by the Trademarks Office from the
International Bureau and all procedures before the Registrar have
protection

been completed and there is no ground for the Registrar to refuse

protection, the Registrar shall, as soon as possible and before the
expiry of the refusal period applicable under Article 5 of the Madrid
Protocol, send to the International Bureau a statement to the effect
that protection is granted to the mark in Malawi.
Provisional 9.__(1) Where the Registrar finds that, in accordance with the
refusal of Act, the mark that is the subject of an international registration
designating Malawi cannot be protected, the Registrar shall, before
protection

the expiry of the refusal period applicable under Article 5 of the

Madrid Protocol, notify to the International Bureau of a provisional
refusal of protection, complying with the requirements of the
Madrid Protocol and the Common Regulations.
(2) The holder of the international registration shall enjoy the
same remedies as if the mark had been filed for registration directly
with the Registrar.
No. 2 Trademarks 45

10.__(1) Where Malawi has been designated in an international Advertisemen

registration, the Registrar shall advertise the international t and
opposition of
registration as provided in the Act. application

(2) Opposition to the international registration shall be in

accordance section 10 of the Act mutatis mutandis.
11.__(1) Where an opposition is filed with the Registrar in respect Provisional
of an international registration designating Malawi, the Registrar refusal based
shall, before the expiry of the refusal period applicable under Article
on an
opposition
5 of the Madrid Protocol, notify that fact to the International Bureau
as a provisional refusal based on an opposition, in accordance with
the provisions of the Madrid Protocol and the Common
Regulations.
(2) The holder of the international registration concerned shall
enjoy the same remedies as if the mark had been filed for
registration directly with the Registrar.
12.__(1) Where the Registrar has notified to the International Final decision
Bureau of a provisional refusal of protection in accordance with following
paragraphs 9 or 11 and all the procedures before the Trademarks
notification of
a provisional
Office have been completed, and the provisional refusal has been refusal
either totally or partially withdrawn, the Registrar shall send to the
International Bureau, either__
(a) a statement to the effect that the provisional refusal has
been withdrawn and that protection of the mark is granted in
Malawi for all the goods and services for which protection has
been requested; or
(b) a statement indicating the goods and services for which
protection of the mark is granted in Malawi.
(2) Where the Registrar after having sent to the International
Bureau a notification of total or provisional refusal in accordance
with paragraphs 9 or 11, and all the procedures before the
Trademarks Office having been completed, the Registrar decides to
confirm such refusal of protection of the mark in Malawi for all the
goods and services for which protection has been requested, the
Registrar shall send to the International Bureau, a statement to that
effect.
13. Where, following the sending of a statement in accordance Further
with paragraph 11, there is a further decision which affects the decision
protection of a mark in Malawi, the Registrar shall, to the extent that
affecting
protection of
the Registrar is aware of that decision, send to the International a mark
Bureau a further statement indicating the goods and services for
which the mark is protected in Malawi.
46 Trademarks No. 2

Effect of an 14.__(1) An international registration designating Malawi shall

international
registration
have the same effect, as from the date of the international
registration, as if an application for the registration of the mark had
been filed directly with the Registrar under this Act.
(2) If __
(a) no refusal is notified by the Registrar to the International
Bureau in accordance with the Madrid Protocol and the Common
Regulations;
(d) a refusal has been so notified but has been subsequently
withdrawn; or
(c) a statement of grant of protection is sent by the Registrar,
the protection of the mark in Malawi shall be the same as if the
mark had been registered directly by the Registrar on the date of
the international registration.
Invalidation of 15. Where the effect of an international registration is
international invalidated in Malawi and the invalidation is no longer subject to
appeal, the Registrar shall notify the International Bureau in
registration

accordance with the relevant provisions of the Madrid Protocol and

the Common Regulations:
Provided that the Registrar is aware of that decision.
Recordings in 16. Any recording made in the International Register in respect
the of an international registration, shall, to the extent that it applies to
International
Register Malawi as a designated Contracting Party, have the same effect as if
it had been recorded by the Registrar in the Register.
Collective and 17. Where an international registration designating Malawi is a
certification collective mark or a certification mark, the rules governing the use
of such collective mark or certification mark shall be submitted
marks

directly, by the holder of that international registration, to the

Registrar, within the prescribed time limit.
Replacement 18.__(1) Where__
(a) a mark registered in Malawi is also the subject of an
international registration, and the protection resulting therefrom
extends to Malawi;
(b) the same person is recorded as holder of the registration in
Malawi and of the international registration;
(c) all the goods and services listed in the registration in
Malawi are also listed in the international registration of a
trademark in respect of Malawi, and
(d) the extension of that international registration to Malawi
took effect after the date of registration of the mark in Malawi,
No. 2 Trademarks 47

the holder of the international registration may request the

Registrar to take note of that international registration in the
register.
(2) A request filed with the Registrar in accordance with
paragraph 1 shall be made in the prescribed form and accompanied
by the prescribed fees.
(3) Where the Registrar has taken note of an international
registration in accordance with sub paragraph (1)(a), the Registrar
shall notify the International Bureau accordingly.
(4) The notification in paragraph (3) shall indicate the
following__
(a) the number of the international registration in question;
(b) where only some of the goods and services listed in the
international registration are concerned, those goods and
services;
(c) the filing date and number of the application for registration
of the mark in Malawi;
(d) the registration date and number of the registration in
Malawi;
(e) the priority date, if any, of the registration in Malawi; and
(f) information relating to other rights acquired by virtue of the
registration in Malawi.
19.__(1) Where an international registration designating Malawi Transformation
is cancelled at the request of the office of origin in accordance with
Article 6(4) of the Madrid Protocol, in respect of all or some of the
goods and services listed in the international registration, the
holder of the trademark which was the subject of the international
registration may, within ninety days from the date on which the
international registration was cancelled, make an application to the
to the Registrar for registration of the same trademark in respect of
an application for goods and services covered by the list of goods
and services contained in the international registration for which
protection has been requested in Malawi.
(2) Subject to subparagraphs (3) and (4), the provisions
applicable to a trademark application filed directly with the
Registrar shall apply mutatis mutandis to an application resulting
from transformation.
(3) An application resulting from transformation shall be made in
the prescribed form and shall, in addition, include the following__
48 Trademarks No. 2

(a) a statement that the application is made by way of

transformation;
(b) the international registration number of the international
registration which has been cancelled;
(c) the date of the said international registration, or the date of
recording of the territorial extension made subsequently to the
international registration, as appropriate;
(d) the date on which the cancellation of the international
registration was recorded; and
(e) where applicable, the date of any priority claimed in the
international application and recorded in the International
Register.
(3) An application resulting from transformation shall be subject
to the payment of the prescribed transformation fees and shall not
be subject to the payment of the standard application fee.
(4) Where a trademark that is the subject of an international
registration has become protected in Malawi on or before the date
on which the international registration was cancelled and, all the
requirements relating to an application resulting from
transformation have been met, that mark shall be registered by the
Registrar.
(5) The date of registration shall be the date of the cancelled
international registration, or the date of recording of the territorial
extension to Malawi made subsequently to the international
registration, whichever is appropriate, and that registration shall
enjoy any priority enjoyed by the cancelled international
registration.
(6) Where a mark that is the subject of an international
registration has not yet become protected in Malawi on or before the
date on which the international registration was cancelled, any
procedures or measures already undertaken on or before the date on
which an application resulting from transformation is filed for the
purpose of the international registration, shall be considered as
having been undertaken for the purposes of the application resulting
from transformation.
(7) The filing date of the application resulting from
transformation shall be the date of the international registration or
the date of recording of the territorial extension to Malawi made
subsequently to the international registration, as appropriate.
Regulations on 20. The Minister may make regulations on the international
international registration of marks under the Protocol.
registration
No. 2 Trademarks 49

21. In the event of a conflict between the provisions of this Act Conflict
and those of the Madrid Protocol and the Regulations thereunder, in between the
Act and the
relation to international registration under the Madrid Protocol, the Madrid
provisions of the Madrid Protocol and the regulations thereunder protocol
shall prevail.

Passed in Parliament this twelfth day of December, two thousand and

seventeen.
FIONA KALEMBA
Clerk of Parliament