The new ?Patents, Industrial Designs and Trademarks Act 2002? came into force in Mauritius on 06 January 2003. The object of the Act is to give effect to the obligations undertaken by Mauritius under the TRIPS Agreement.

Although the new law is now in force, the supporting Regulations have not yet been prepared with the result that certain aspects of the law cannot yet be implemented.

The main provisions of the new Act are as follows:

Trade Marks

·         Classification - The Nice Classification, 8th edition, will apply. Multi-class applications are provided for. The repealed law did not provide for classification, so existing registrations are not classified, and we presume that these will be classified upon renewal, although the new law is silent on this.

·         Convention Priority - Priority may now be claimed under the Paris Convention.

·         Examination, Advertisement, Opposition - Provisions are retained for these. Examination for registrability has always been rigorous, and we suspect this will stay the same.

·         Term & Renewals - registrations gained under the New Act will be renewable for successive ten-year terms, instead of 7 years then successive 14-year terms under the repealed Act. Existing registrations will complete their current terms, then be renewable for ten years.

·         Use & Non-use - The new law provides for removal of a registration on the grounds of three years? non-use, up to one month before application to remove. There was no machinery for cancelling an unused trademark under the repealed law.

·         Licensing - Under the new law, licences must be recorded in order to be enforceable against third parties, and those licences must provide for quality control.

·         Remedies for Unregistered Marks - In terms of Article 6bis of the Paris Convention, marks that are well-known in Mauritius are recognised and may be enforced, even if unregistered.

Patents

·         The conditions for patentability in Mauritius are absolute novelty (previously, only local novelty was required), inventiveness, and industrial applicability.

·         An application must also satisfy the criterion of unity of invention, although lack of unity is not a ground for invalidation of a patent. Division of an application may be carried out at any time before grant of a patent.

·         Amongst other subject matter, methods of treatment or diagnosis practiced on the human or animal body are specifically excluded from patentability in Mauritius. However, any product used in such a method is not so excluded.

·         The right to a patent belongs to the inventor, unless the invention is made during the course of an employment contract, or has been assigned or transferred by succession. Where the applicant is not the inventor, a statement justifying the applicant?s right to the patent must be furnished to the Patent Office.

·         Priority may be claimed under the Paris Convention. A certified copy of the priority document(s) may be requested by the Controller.

·         Substantive examination, as such, is not contemplated under the new Bill, but the applicant is required to furnish any details of search and examination carried out on corresponding foreign applications, if so requested by the Controller, and these will be used as the basis of the examination procedure in Mauritius.

·         The term of a patent under the new Act is 20 years from the filing date (previously, a patent expired after 14 years from the date of signature of the grant certificate, extensible by a further 14 year term upon request). Annual fees are now payable under the new Act, commencing on the first anniversary of the filing date.

·         PCT national phase applications in Mauritius are now provided for by the new Act.

Industrial Designs

·         Industrial designs are registrable in Mauritius if they are new (and an absolute novelty requirement is specified).

·         Again, the right to an industrial design belongs to the creator, unless created during the course of employment, assigned or transferred by succession.

·         Priority may be claimed under the Paris Convention, and a certified copy of the priority document(s) may be requested by the Controller.

·         Two or more designs may be the subject of the same design application, if they relate to the same class of the International Classification or to the same set or composition of articles.

·         The registration of an industrial design expires after 5 years from the filing date, although this term is extensible for three further consecutive periods of 5 years each upon payment of a renewal fee.

Transitional provisions

·         The term of any patent which has not expired upon entry into force of the new Act will be deemed to be the unexpired period from the date of the patent, and any patent which has been extended under the repealed Act will continue to be in force for the remainder of the unexpired period. However, annual renewal fees will be due on such patents, as provided for under the new Act. We are currently investigating whether back annuities will therefore become payable, or whether only those annuities which fall due after the entry into force of the new Act are payable..

This information is correct to the best of our knowledge, but only represents an overview of the new Acts. Please let us know if you require any more detailed information.