The Trademarks Act, 2004 (Act 664) is legislation enacted by the Third Parliament of the Fourth Republic of Ghana and signed into law by President John Agyekum Kufuor. The act regulates the process through which trademarks and collective marks are registered, the issuance of registered trademarks and how trademarks and collective marks are protected through the enforcement of the act. The rationale for enacting the act is for the protection of the goodwill and reputation of the business of a proprietor.Pulsart Impex Limited v. Dart Hills Limited Suit No. IPR/4/07 (High Court of Ghana) The act establishes the Trademark Registry (Registar) to which is mandated to register trademarks and issue registered trademarks. The act has been amended by the Trademarks (Amendment) Act, 2014 (Act 876) which came into force on 25 July 2014. The Amendment incorporated the Madrid Protocol into The Act.
Structure This Act is made up of fifty-four (54) sections and three (3) schedules that are arranged under various headings as follows; HeadingsSectionsRegistration of Trademarkss 1–17Trademark Registrys 18–22Trade description and Fraudulent Markss 23–33Functions of Registrar and Legal Proceedingss 34–43Miscellaneous Provisionss 44–54 ScheduleTitle First scheduleArticle 4 – Paris convention 1967Second scheduleForm of NoticeThird ScheduleSpecial Provisions Relating to Protection of Trademarks Through International Registration Under the Madrid Protocol
Registration of trademarks
Meaning of trademark Per the amendment, a trademark means, sign or combination of signs including words such as personal names, letters, numerals, and figurative elements.The Amendment, s 1 A trademark may consist of words, personal names, designs, letters, colours, numerals, shapes, holograms, sounds or a combination of any of these elements; slogans, where they are not long enough to be protected by copyrights.
Application for Registration The application for registration of a trademark must be filed with the Registrar and is contingent on the payment of a prescribed fee.The Amendment, s 4(1) The application must contain a reproduction of the trademark and a list of goods or services for which for which the registration of the trademark is made and the applicant must have a bona fide intention for which the trademark is to be used in relation to goods or services.The Amendment, s 4(2) The application may contain a declaration claiming the priority of an earlier national or regional application filed by the applicant or the predecessor in title of the applicant.The Act, s 4(3)
An application for registration can be refused on several grounds such as where the trademark is a trade name, it is incapable of distinguishing the goods or services of one enterprise from the goods or services of another enterprise or devoid of distinctive character, it is contrary to public order or morality or 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 among others.The Amendment, s 5
Once the Registrar has examined the application for registration of the trademark and is satisfied that it complies with all the Act, the Registrar shall then publish the application as to allow any interested person to file a notice of opposition claiming that one or more of the requirements have not been met.The Act, s 6 When the Registrar sends a copy of the notice of opposition to the applicant and the applicant does not respond to the claims of the notice, the applicant will be deemed to have abandoned the application.
Where the application has not been opposed within the prescribed time limit or any oppositions were granted in favour of the applicant and the Registrar is satisfied that the application has met all necessary requirement, the Registrar shall then register the trademark, publish a reference to the registration and issue the applicant with a certificate of registration.The Act, s 7 When the trademark has been published trademark enjoys the same rights and privileges as if the trademark has been registered so long as the application has been published.
Meaning of collective mark The amendment defines a collective mark is a visual sign capable of distinguishing the origin or any other characteristic of different enterprises which use the sign under the control of a registered owner from any other enterprises or a collective mark can be a visual sign cable of distinguishing the origin of the quality of goods or services of different enterprises which use the sign under the control of a registered owner from goods and services of any other enterprises.The Amendment, s 2 The former meaning can be described as a collective membership mark as the mark only serves to show membership in a collective group of enterprises and the collective itself does not use the mark to identify its products or services. The latter meaning of collective mark can be described as a collective mark for commerce as the mark is intended to identify the goods or service as belonging to a certain membership of enterprises.
Registration of Collective Mark The registration procedure for collective marks is the same as the registration procedure for trademarks, and thus the Registrar may grant an applicant a registration certificate for a collective mark once he is satisfied that all requirements have been met. The only difference between the registration of trademarks and collective marks is that an application for registration of a collective mark shall designate the trademark as a collective mark and shall be accompanied with a copy of the regulations governing the use of the collective mark.The Act, s 8
Rights Conferred by the Registration of Trademarks and Collective Marks A person other than a registered owner of a trademark shall not knowingly infringe the rights of the owner of a registered trademark by using a trademark in relation to goods or services for which the trademark was registered without the consent of the owner.The Act, s 9 A person may also not use signs that are similar and identical to the registered trademark as the registered owner's right extend to such identical signs. In the Ghanaian case of Menkish Impex Limited v Pam Ventures Limited,Suit No.IPR/2/09 it was held that, in relation to the two marks ‘’Heaven’’ and ‘’Dhoom’’, they are not so similar as to qualify for an infringement of trademark. The defendant’s mark ‘’Dhoom’’ was held not to resemble the Plaintiff’s registered mark as to cause the likelihood of confusion and deception.
Although the registered owner of a trademark has exclusive rights, such rights are limited to an extent. The rights conferred by registration do not extend, thus in turn no infringement claim can arise, to acts in respect of articles which have been put on the market in any country by the registered owner or with the consent of the owner.
Once the registered owner establishes an infringement of trademark, either by the authorised use of the registered trademark or acts likely to infringe the trademark, the registered owner may institute court action against a person who infringes a registered trademark and such a person may be held to have committed an offence and is liable on summary conviction to a fine of two hundred and fifty (250) penalty units or term of imprisonment not exceeding one year or both.
Duration of Trademark and Collective Mark Protection The duration of a registered trademark is for a period of ten(10) years from the filing date of the application for registration and may be renewed for a consecutive period of ten years subject to the payment of a prescribed fee for renewal.The Act, s 10 The registration of a collective mark enjoys the same duration and renewal rights as a trademark.
Invalidation of Trademark and Collective Mark An already registered trademark may be invalidated on two grounds, namely; Where it is proved that the registered trademark did not comply with any of the requirements in the Act. Where the registered trademark has become a common name in the trade for goods or services for which it is registered.The Act, s 12 An already registered collective mark may be invalidated on three grounds, namely; Where only the registered owner uses the trademark to the exclusion of any other enterprises Where the registered owner permits the use of the trademark in contravention of the regulations of the collective mark Where the registered owner uses or permits the use of the trademark such a way as will likely to cause confusion to trade circles or the public as to the origin of the goods or services concerned.The Act, s 13
Removal of Trademark and Collective Mark from Registration for Non-use An already registered trademark, although not invalid, may be removed from the register of trademarks where a person interested in a trademark requests the Registrar to remove a trademark from the register because the trademark had not been used for a continuous period of five years or more.The Act, s 14 A collective mark may also be removed from the register in accordance with the procedure applied to trademarks.
Change in Ownership of a Trademark and Collective Mark An application for a change in the ownership of a trademark or collective mark shall be in writing and be filed with the Registrar.The Act, s 15 The owner of a trademark may transfer the trademark in whole or in part for the goods or services for which it has been registered. Also where a person transfers an enterprise's, it is impliedly deemed that such a person has also transferred the trademark rights of the enterprise.
Licence Contract A licence contract concerning the registration of a trademark or an application for registration shall be filed with the Registrar for which the contents shall be kept confidential but a reference to it will be published and if the said licence contract is not properly filed with the Registrar it is ineffective against third parties. For a licence contract to be valid, the licensor must have effective control over the quality of the goods or services of the licensee in connection with which the mark is used.The Act, s 16
Agency An applicant who has a registered trademark in Ghana but is an ordinary resident outside of Ghana's jurisdiction must be represented by a legal practitioner resident in the country.The Act, s 17
The Trademark Registry
The Trademark Register The registry is mandated to make a register of trademarks for keeping records of all registered trademarks. In cases of collective marks (trademarks of companies) the registry is required to provide a special section in the register to keep them.The Act, s 19 Application for a trademark is to be in writing and it would only be granted if it is applied directly for a trade description or applied to goods; or it is applied to a covering label, reel, or any other thing in which the goods are sold or manufactured.The Act, s 23 After the application has been granted, a person (whether natural or legal) could be represented by the said trademark, the person is entitled to use it in businesses or in any kind of advertisement.
An entry in the register would be rectified or erased upon request where there has been an omission, error or a defect in the registration by the affected person. This request may be made to the registrar who further forwards the application to the high court. The application for rectification does not in any way affect the validation of the trademark unless it found that the trademark was made fraudulently.The Act, s 20 The time for correction of the errors may be extended on notice to the parties concerned and on the terms directed by the Registrar.The Act, s 22 The register as provided by the act is opened to the public; it is to be published in the gazette.The Act, s 21
Trade Description and Fraudulent Marks
Offences under the Act