INTELLECTUAL PROPERTY FOR BUSINESSES: The duties of a registered trademark owner

An owner of a registered trademark must use the mark within Ghana or risk losing the protection granted by registration.

The Trademarks Act grants a person interested in a trade mark to request the Registrar to remove a trade mark from the register because up to one month prior to filing for removal the trade mark had not been used by the registered owner or a licensee for any of the goods or services in respect of which it was registered for a continuous period of five years or longer. The Registrar will not remove the mark upon such filing only if it is shown that special circumstances prevented the use of the trademark and that there was no intention to abandon the trademark in respect of those goods or services.

A registered trademark owner is obliged to maintain the trademark by renewal subject to the prescribed fee every ten consecutive years. A grace period of six months is allowed for the late payment of the renewal fee upon payment of the prescribed surcharge.

The effect of non-renewal is the striking out of the trademark from the Register of Trademarks.

An owner of a registered trademark must take steps to prevent the trademark from becoming generic, that is a common name in the trade for goods or services for which it is registered. In Ghana, the High Court may invalidate the registration of a trademark if because of any act or inactivity of the owner, the trademark has become the common name for services for which it is registered.

lt is also the duty of the owner of the registered trademark to police the trademark to prevent infringement by third parties or to take legal action against infringers.

As we draw the curtain on Trademark series, I trust and believe that you and your invention are safe because you have advanced in the knowledge of Trademark. All the best!