1. INTRODUCTION
In both developed and developing countries, trademarks are the most common form of registered intellectual property rights. This shows their level of importance in commerce. As the business climate in Sierra Leone is changing fast, so is the practice of acquiring and enforcing trademarks. There is a steady increase in trademark registration in Sierra Leone. And trademark squatting is on the increase as well. As a result, a clear understanding of acquiring ownership of your trademark is key to your business success. Trademark ownership is generally acquired through registration at the Intellectual Property Department of the Office of the Administrator and Registrar General [OARG] in Freetown. The law that governs trademarks in Sierra Leone is the Trademark Act of 2014. The legislation provides for extensive rights and procedures for acquiring and protecting brands in Sierra Leone.
2. REGISTRATION PROCEDURE
A local trademark owner can apply to register a trademark by himself at the IP Department of the OARG. Foreign applicants, however, must consult a legal practitioner, practicing law in Sierra Leone, to lodge a trademark application. Foreign applicants must execute a Simply Signed Power of Attorney in the legal practitioner’s favour. The applicant or his solicitor must conduct a trademark search or clearance. This will determine whether there is no similar trademark concerning the class of goods or services in the registrar’s database. The application must be accompanied by proof of payment of the requisite official search fees, the logo or word, etc., and the class of goods as per the Nice Classification. Where the search reveals no similar mark in the trademark registry, the registrar will give a verbal communication to proceed with the registration of the trademark.
An application for registration must include the following particulars:
i. Simply sign a Power of Attorney [if applicable].
ii. Proof of payment of the official government fees;
iii. Not less than three representations of the trademark and accompanied by a stereotype block of such representations.
After submission of the filing particulars and accompanying documents, the trademark registrar will formally register your mark for the goods or services to which the application relates. After registration of the trademark, the applicant is entitled to all rights and privileges as if he has been issued with
a trademark certificate on the mark. However, it shall be a valid defense to an action in respect of an act done after the application has been published, if the alleged infringer establishes that the trademark could not validly have been registered at the time the act was done.
3. SUBMISSION OF FILING PARTICULARS AND THE ISSUING OF REGISTRATION CERTIFICATE
After submission of the filing particulars, the registrar of trademarks would examine the trademark and cause it to be published in the Gazette. This is to enable all interested parties to file an opposition to the registration of the trademark. Parties interested in opposing the registration of a published trademark must do so within three to nine months. Because no opposition tribunal has been established as required by the trademark act, opposing or challenging the registration of a published trademark is highly unlikely. The only remedy that may be available to such an individual is to proceed to court to expunge the registered trademark. This, however, may take a lot of time and is very costly. Where there is no opposition to the trademark or where the opposition was unsuccessful, the registrar will issue a certificate of registration to the applicant.
Another fundamental issue that brand owners must be aware of is that trademark certificates do not come in early. The registrar of trademarks normally issues a certificate of registration between one and two years after the submission of the filing particulars for the registration of the mark. The problem is normally associated with the Sierra Leone Government Printing Press in printing out the certificates of registration.
4. CONCLUSION
Your trademark forms the key aspect of your business. And, if you want to trade or do business in Sierra Leone, make sure you register and protect your trademark. This is especially so when trademark squatting is on the increase in Sierra Leone.