Registering Defensive Trademarks In Mozambique

• Published date: 06 August 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Inventa International
• Author: Mr Miguel Bibe

The Industrial Property Law of Mozambique (31 December 2015) established the requirement to submit a declaration of intention to use (DIU) for trademarks. Unlike other Lusophone jurisdictions (eg, Portugal or Angola), where use of a mark is mandatory for the goods and/or services identified, the DIU system maintains the exclusive rights to a mark regardless of whether it is being used in the territory.

This means that once the mark is granted, the owner may unilaterally exclude any other entity from using a similar one even if they do not use the mark themselves.

Generally, the requirement to use a mark in order to maintain its registration allows any interested party to act against an exclusive right if it is not being used. This can prevent entities from benefiting from an exclusive right in perpetuity without actually using the trademark. However, the DIU system allows mark owners to keep a registration active regardless of whether the mark is being used and without third parties being able to act against the registration.

Further, the DIU system maintains a tacit acceptance as to the registration of trademarks with a purely defensive purpose in Mozambique. Through this type of designation, a mark owner (notorious or not) can file a trademark for goods and services that it does not intend to use, but which is at risk of being used by third parties. Through simple administrative acts, (eg, filing of a requirement or payment of fees), it is possible to maintain rights in force instead of having to prove concrete, repeated and public use.

Therefore, under this defensive method of protection, a mark owner may never use its designation without being exposed to possible cancellations due to lack of use, as it is a trademark that is registered not to be used, but to increase the scope of protection and with the purpose of preventing possible infringement actions.

DIUs must be filed every five years in Mozambique counting from the filing...