Trade and Service Marks
– The Industrial Property Order, 1989 (Order No. 5 of 1989, as last amended by Act No. 4 of 1997).
– The Industrial Property Regulations, 1989 (Legal Notice No. 85 of 1989).
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since October 4, 1966.
– Convention Establishing the World Intellectual Property Organization (WIPO), since November 18, 1986.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since September 28, 1989.
– WTO’s TRIPS Agreement, since May 31, 1995.
– ARIPO, Banjul Protocol on Marks, since February 12, 1999.
– Madrid Agreement Concerning the International Registration of Marks, since February 12, 1999.
– Madrid Protocol, since February 12, 1999.
Note: while Lesotho has signed up to the Madrid Agreement and Madrid Protocol, no legislation has been adopted to confirm Lesotho’s obligations in terms of the Madrid Union and there are no Registers of international registrations. Section 44 of The Order contains a general provision that in the case of a conflict between an international treaty in respect of intellectual property and any provision in the Order, the international treaty will apply. This does not overcome the requirement that, in order for an international treaty to have effect in Lesotho, it must be expressly and specifically transformed into municipal law through enactment by the national legislature. International trademark registrations are not valid and enforceable in Lesotho.
Application: although the regulations provide for the application form to be signed by the applicant, there has been a ruling to the effect that forms signed under power of attorney will be acceptable. The application form calls for the usual information concerning the applicant’s full name, citizenship or state of incorporation and address.
Certification/collective marks: there is provision for registration of collective marks.
Service marks: provided for.
Color marks: color per se is not registrable.
Three-dimensional marks: accepted.
Defensive and series marks: not provided for.
Essential particulars for registrability: Section 26(2) of the Order provides that a mark cannot be validly registered if it is incapable of distinguishing the goods or services of one enterprise from another; if it is contrary to public order or morality or is likely to mislead the public or trade circles; if it is identical, or confusingly similar, to a mark which is already on the Register for the same or closely related goods or services, or a mark or trade name which is well-known in Lesotho for identical or similar goods or services; or if, without authorization, it is identical to, or an imitation of, or contains an armorial bearing, flag, emblem, name, etc., of a state or intergovernmental organization.
Classification: International Classification; several classes may be covered in a single application.
Filing requirements for an application (to be sent to authorized agent):
1. Power of attorney (notarization and legalization is not necessary);
2. Where the applicant is a body corporate, an “enabling resolution” from the Board of Directors authorizing the signatory to the power of attorney to sign on behalf of the applicant;
3. 10 prints of the mark (not required for word marks);
4. Priority document (if applicable), with verified English translation.
Examination: the Order provides for official examination as to compliance with formalities, registrability and conflicting marks. As from 2017, the Registrar started examining trademarks on absolute and relative grounds.
Letter of consent: the Registrar may accept a consent from a prior registrant.
Opposition: acceptance of an application is advertised once and notice of opposition may be filed within three months of advertisement unless an extension is obtained.
Duration: ten years from the filing date.
Renewals: the term is renewable for like periods, either during the six-month period preceding expiry or upon payment of a surcharge within six months after expiry.
Use of trademarks: compulsory. Trademarks may be removed from the Register on, inter alia, grounds of non-use for a continuous period of three years from the date of registration, at request of any interested person. Is considered valid trademark use: use on commercial material (e.g. invoices, stationery); use by a licensee, provided license has been recorded; export of marked goods/services; or use at exhibitions or fairs held in the country. Nominal use or renewal is not considered proof of use.
Modification of Protection after Registration
Assignment: any change in ownership/assignment must be in writing and shall have no effect against third parties unless recorded. An assignment must include transfer of the business or the part thereof identified by the mark(s) in question and will be invalid if it is likely to deceive or cause confusion.
Licensing: there is provision for licensing of trademarks provided there is effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. It seems that recordal of licenses is compulsory, on pain of invalidity.
Infringement proceedings: can only be brought in respect of registered trademarks and can be brought in respect of the exact goods and services and for similar goods and services for which the trademark is registered. Provision is also made for action against acts of unfair competition. Any act of competition contrary to honest practices in industrial or commercial matters is unlawful. The Order also sets out specific acts of unfair competition.
Remedies for trademark infringement and unfair competition include an injunction, damages and any other remedy provided for in general law.