Trade and Service Marks

– Ordinance No. 89-019 of July 31, 1989, and Decree No. 92-994 of December 2, 1992, effective December 9, 1993.

The Madagascar Industrial Property Law is currently under review to ensure compliance with the provisions of the World Trade Organization TRIPS Agreement, but the new law has not yet been enacted.

Membership in International Conventions

– Madagascar joined OAMPI on October 14, 1958, and trademark rights were governed by the terms of the Libreville Agreement, which came into force on January 1, 1964. Madagascar left the OAMPI Union on December 31, 1976.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since December 21, 1963.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 22, 1989.
– WTO Marrakesh Agreement, January 1995.
– WTO’s TRIPS Agreement, since November 17, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since April 28, 2008.

Filing

Applicant: any individual, partnership, or company, either national or foreign. 

Trademarks of foreigners: protected in the same manner as those of nationals. 

Kinds of protection: trademarks, collective marks, confirmation marks – of prior OAMPI rights – (deadline for filing was December 9, 1994); no provision for defensive registrations. 

Marks for services: services can be protected.

Novelty: a mark belongs to the person who was first to file the application at the Registry, and subsequent applications by third parties for registration of a similar or identical mark for similar goods or services shall be deemed to conflict with a prior right.

Not registrable: signs contrary to public policy or morality, and which are liable to deceive the public as to the nature, the source, the manufacturing process, the characteristics or suitability for their purpose, of the goods or services concerned; non-distinctive signs; geographical indications liable to mislead the public or whose registration would interfere with the use of the geographical indication by those entitled to use it. 

National flags, names or portraits: signs which imitate armorial bearings, flags and other emblems, official signs or hall-marks adopted by a state, initials, names or abbreviations of any state or of any intergovernmental international organization may not be registered in the form of a mark unless authorized by the competent authority of such state or organization.

Classification: International Classification of 45 classes.

Multi-class applications: possible.

Territory covered: the whole of Madagascar.

Filing requirements for an application (to be sent to resident agent):
1. Notarized power of attorney (once on file, it will suffice for future applications);
2. 10 prints of the mark;
3. If Convention priority is claimed, a certified copy of the basic application together with a French translation.

For registration of licenses:
1. Notarized license agreement in French or together with French translation;
2. Notarized power of attorney.

For registration of assignments:
1. Notarized deed of assignment or other instrument of title in French or together with French translation;
2. Notarized power of attorney.

Examination Procedure

Amendment of application: correction of errors is possible upon payment of a fee. 

Examination: the law provides for examination as to form and substance, but in practice substantive objections are only raised in respect of identical prior rights, resulting in the outright rejection of the application. The only way to overcome a rejection is by an appeal before a court of law.

Letters of consent: whilst it is not possible to overcome the rejection of an application (on the basis of a prior right) with a letter of consent because there is no procedure for responding to the rejection other than an appeal before the court, it is possible to file a letter of consent together with a new application, to avoid it being rejected. 

Opposition: there is no provision for opposition, but marks may be cancelled at any time on application to the competent court.

Publication: registration of the trademark is advertised in the Official Industrial Property Gazette after grant.

Registration, Protection

Delivery of document: approximately eighteen months after filing. 

Correction of registration: correction of errors is possible. 

Beginning of protection: as from the date of filing. 

Duration: ten years from the date of filing (trademarks); ten years from “acceptance” date (confirmation marks).

Renewal: every ten years from the date of filing (trademarks); every ten years from the date of acceptance (confirmation marks). There is a six-month period of grace. 

Compulsory character of registration: no one may claim exclusive right in a mark unless he has validly filed an application for registration. 

Obligation to use: the property right in a mark shall lapse for failure to use a mark within three years from registration (this term is not defined in the Law, but it is assumed that this is the date of issue of the certificate of registration), unless the owner is able to produce legitimate reasons for his failure to act. The Law implies that the lapse of rights is automatic if there has been no use within the stated term and that subsequent use will not revive rights. A mark will remain on the Register, however, until it is declared invalid by a court of law.

Marking of registered goods: no provision. 

Modification of the mark and changes in the list of goods: modification of mark is not possible; restriction of the list of goods/services is possible. 

Licenses: must be in writing and recorded at the Industrial Property Office to be effective against third parties. 

Assignments: with or without goodwill, in respect of all or some of the goods/services. Assignments must be in writing and recorded at the Industrial Property Office to be effective against third parties.

Modification of Protection after Registration

Right of prior user: not recognized except in the case where the mark was in continuous use prior to the coming into force of the law, and evidence of such use was filed together with application for registration of the mark, within three years of the law coming into force. 

Compulsory licenses: not provided for.

Expropriation or nullification: the competent court may at the request of any interested party, declare null and void a registration which is not distinctive; which is deceptive or contrary to public policy or morality; or which conflicts with a prior right in respect of the same goods or services. The property right in a mark shall lapse for failure to renew, and for failure to use the mark within a period of three years from the date of registration, without legitimate excuse.

Validation, restoration and registration of invalidated marks: there is provision for requesting restoration of rights which have lapsed due to failure to comply with time limits, by reasons of force majeure. There is no restriction on application for re-registration of lapsed or invalidated marks. 

Infringements and penalties: a trademark’s proprietor may apply to a court for seizure of infringing goods, and institute an action for damages. Infringement of trademark rights also constitutes a criminal offense punishable with imprisonment and/or fine.