INTELLECTUAL PROPERTY FOR BUSINESSES: Trademark (Part 4)

The Legal Period and Extension of Trademark Protection

The period of protection is ten years from the filing date of the application for registration and the registration can be renewed for consecutive periods of ten years subject to payment of prescribed fees for renewal. The law requires that any change in the ownership of a trademark or license contract regarding a trademark should be in writing and be filed with the Registrar.

A license contract which has not been filed with the Registrar is not valid against third parties.
Trademark protection is enforced at the courts which in most systems have the authority to block trademark infringement. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark.

An unregistered mark may be protectable only within the geographical area within which it has been used. It requires proof of such usage and associated reputation or goodwill which may be a herculean task and more costly. A registered trademark provides a prima facie evidence of ownership.

In Ghana, the High Court has jurisdiction over trademark matters. The Commercial courts, being a specialized court expedites proceedings in trademarks related cases. Order 55 of the Civil Procedure Rules, 2004 (CI47) provides for the procedure for handling Intellectual Property cases.

How extensive is Trademark protection?

Each national or regional office maintains a Register of Trademarks which contains full information on all registrations, renewals, facilitating examination, search and potential opposition by third parties.

The Registrar-General’s Department maintains the Register of Trademarks. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.

In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol.

Ghana is a signatory to the Madrid Protocol and the system is available to Ghanaian citizens and business resident in Ghana. To qualify to apply through the Madrid System, the owner of the mark must first apply for a local registration at the Registrar-General’s Department.

ARIPO as a Regional body also maintains a register for member states that are signatories to the Banjul Protocol.

Currently, Ghana as a member state of ARIPO has not ratified the Banjul Protocol and as such the system cannot be utilized by businesses in Ghana.