Twitter’s bird (Larry T Bird) , Nike’s Swoosh, McDonald’s M,
What do these have in common? If you guessed that they are all trademarks, you guessed correctly.
“Trademark” is a common word that is used in both common and legal parlance. In this article, we explain trademarks from a legal point of view, with a particular focus on Ghana’s laws.
Trademark is a word, name, symbol, or device used to indicate the source, quality and ownership of a product or service. A trademark is used in marketing as a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. In this article, the words “trademark” and “trade mark” being the American and British spellings will be used interchangeably.
Ghana’s Trade Marks Act, 2004 (Act 664) defines “trademark” in section 1 as any sign or combination of signs capable of distinguishing the goods or services of one undertaking from the goods or services of other undertakings including words such as personal names, letters, numerals and figurative elements.
WHY ARE TRADEMARKS LEGALLY PROTECTED?
Creating a trademark to identify products from a particular source takes a lot of hard work and creativity. Thus, where a person by the ingenuity of his adverts or the quality of his product induces consumer responsiveness to a particular name, symbol, form of packaging, etc, and has thereby created a thing (property) of value; the creator of that property is entitled to protection against third parties who seek to deprive him of his property.
RIGHTS CONFERRED FOR TRADEMARK REGISTRATION IN GHANA
Act 664 provides certain rights to holders of trademarks in Ghana. Section 9 gives trademark holders the following rights and protections:
- No one apart from the trademark owner can use the trademark in respect of any good or service without the owner’s consent. Using a trademark in such a manner without the owner’s consent constitutes infringement.
- The registered owner may institute court action against any person who infringes a registered trade mark by using the mark without permission or performs acts which make infringement likely to occur.
- Where others use a sign that is similar or identical to a registered trademark is used for identical or similar goods and services, it is presumed that this will lead to the likelihood of confusion among the public.
- The registered owner can legally prevent others from using similar signs for similar products which could lead to confusion and an application to register that trademark may be rejected.
- The above-mentioned rights do not extend to acts in respect of articles which have been put on the market in any country by or with the consent of the registered owner.
- A person who infringes the right of a registered owner of a trade mark by knowingly using a trade mark for goods or services without the consent of the registered owner commits an offences and is liable on summary conviction to a fine not exceeding 250 penalty units or a term of imprisonment not exceeding one year or to both.
REGISTERING A TRADEMARK IN GHANA
The first step in registering a trademark in Ghana is to conduct a search at the Registrar-General’s Department before applying for registration. Although this step is optional, it is important to ensure that no identical trademark has been registered or is pending registration.
Trademark Form No. 2 is used for the application of Trademark. An applicant is required to attach four (4) representations of the trade mark with a prescribed fee of $ 200.00 or its Cedi equivalent. Applicants whose principal places of business are located outside Ghana are required to apply through a legal entity in Ghana.
Each application shall be for registration in respect of goods in one class only of Schedule 1 to the Trademark Regulations.
Every application to register a trademark shall be accompanied by three additional representations of the mark, which shall correspond exactly with the representation on the application. If the mark is to be registered in more than one class, then two additional representations for each class after the first shall be supplied.
REVIEW/EXAMINATION OF TRADEMARK FORM No. 2 BY THE TRADEMARKS OFFICE
The Registrar examines whether the Trademark application is in conformity with the requirements of Section 1, Subsection (1) and (2) of Section 4, and Section 5 of the Trademarks Act, 2004, Act 664. If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within two months the applicant applies for a hearing or makes a considered reply in writing to those objections, he shall be deemed to have withdrawn his application.
GROUNDS FOR REFUSAL OF REGISTRATION
Section 5 of Act 664 allows the Registrar to refuse the registration of a trademark on the following grounds:
- It is a trade name;
- it is incapable of distinguishing the goods or services of one enterprise from the goods or services of another enterprise;
- it is contrary to public order or morality.
- It is likely to mislead the public or trade circles with particular reference to the geographical origin of the goods or services, their nature or characteristics.
- It is identical to or is an imitation of or contains as an element, an armorial bearing, flag, emblem, name, abbreviation or initials of the name, official sign or hallmark adopted by a State, intergovernmental organization or organization created by an international convention unless authorized by the competent authority of that State or organization.
- It is identical to or confusingly similar to or constitutes a translation of a trade mark or trade name which is well known in the country for identical or similar goods or services of another enterprise, or the trade mark is well known and registered in the country for goods or services which are not identical or similar to those under application but the use of the trade mark will indicate a connection between those goods or services and the owner of the well-known trade mark and the interests of the owner of the well-known trade mark are likely to be damaged by the use of the trade mark.
- It is identical to a trademark of another owner already on the register or identical to a trade mark the subject of an application with an earlier filing or priority date for the same goods or services or closely related goods or services or if it resembles that trade mark so closely that it is likely to deceive or cause confusion.
PUBLICATION AND OPPOSITION OF TRADEMARK
All Trademark applications accepted by the Registrar are published in the Industrial Trademarks Bulletin (Journal) for a period of two (2) months. Within this period any interested party/person may file for a notice of opposition to the registration in a prescribed manner.
CERTIFICATION OF TRADEMARK
In the event where there is no opposition to the approved Trademarks, the proprietor of a Trademark will request for the issuance of his trade mark certificate.
A certificate of Registration of Trademark is then issued to the applicant and the registered trademark is valid for a period of ten (10) years from the filing date of the application.
RENEWAL OF TRADEMARKS AND OTHER INFORMATION
Renewal of trademarks are made every ten (10) years.
- NB: Non-use for five (5) years following registration makes the registration vulnerable to cancellation.
- SCHEDULE OF TRADEMARK FEES
- TRADEMARK SEARCH: $ 110.00
- TRADE MARK APPLICATION: $ 200.00
- CERTIFICATION OF TRADE MARK: $ 200.00
Nartey Law Firm is a leading corporate and commercial law firm in Ghana providing legal services to individuals, domestic and international businesses. Ensuring the success of our clients’ objectives is at the core of what we do. Comprised of a dedicated team of lawyers with extensive experience in corporate, commercial and international law and litigation, we pride ourselves with the diligent execution of all client matters, whilst guaranteeing an uncompromising standard with respect to excellence in service delivery. Some of our focus areas are Real Estate, Trade and Commerce, Banking and Finance, Regulatory Advisory, Capital Markets and Mergers and Acquisitions.
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Disclaimer: This publication is for information purposes only and is not intended to constitute legal advice. If you require information on any matter discussed in this article, kindly reach out to the firm directly.