An Introduction to Trademarks forSmall and Medium-sized Enterprises

in Malawi

Intellectual Propertyfor Business Series

MAKING A MARK

1Number:

“Department of the Registrar General, Ministry of Justice of Malawi (2011)”. WIPOowns copyright in the original English language version (2006).

Disclaimer: ‘This publication has been customized and reproduced withthe prior express permission of the World Intellectual PropertyOrganisation (WIPO), the copyright owner of the original Englishversion, which is available at www.wipo.int/sme/en/documents/guides/.As such, WIPO is not liable or responsible for the accuracy orcorrectness of the customized version of the publication, as that liabilityor responsibility rests solely with the Department of the RegistrarGeneral, Ministry of Justice of Malawi.

Publications in the “Intellectual Property for Business” series:

1. Making a Mark: An Introduction to Trademarks for Small andMedium-sized Enterprises in Malawi. Department of RegistrarGeneral, publication No. 001.

2. Looking Good: An introduction to Industrial Designs for Small andMedium-sized Enterprises in Malawi. Department of RegistrarGeneral, publication No. 002.

3. Inventing the Future: An introduction to Patents for Small andMedium-sized Enterprises in Malawi. Department of RegistrarGeneral, publication No. 003.

4. Creative Expression: An introduction to Copyright for Small andMedium-sized Enterprises in Malawi. Department of RegistrarGeneral, publication No. 004.

All publications available from the Department of Registrar General,Fatima Arcade, P.O. Box 100, Blantyre, Tel: 01 824355/795, Fax: 01821686, E-mail: reg@malawi.net

'Until recently, Intellectual Property has been viewed asluxury by industry and in particular, by the Small andMedium-sized Entreprizes (SMEs). Every business hassome valuable intangible property worth protecting.The SMEs need to be abreast of the latest informationon Intellectual Property Rights (IPRs) systems so thatthey are able to protect their IP assets. Ignorance inIntellectual Property issues may lead to loss of SME’svaluable rights or expensive litigation or both.

This customized version of 'Trademark’ discussesbasics of trademerk and benefits to be derived fromtheir protection and use. The effort of gettingtrademark protection is complex. However, the long-term benefits from the protection of trademark arehuge and far outweigh the efforts and investment.

I commend the efforts of the Department of RegistrarGeneral’s team comprising Mr Joseph K. Chintolo, MrP. M. Chimteya and Mr A. Nyirenda during productionof this book. In particular, I commend Mr Chintolo forproviding guidance and legal input. In a special way, Icommend the tireless efforts, expertise and technicalknow-how of Mr H.Y. Mateche, the Consultant, incustomising, developing and producing this book.Finally, I thank the World Intellectual PropertyOrganisation (WIPO) for its financial support forproducing this book.

G. E. NkhataDEPUTY REGISTRAR GENERAL

Preface

Table of Contents

Page

Trademarks 3

Protecting Trademarks 6

Types of Trademark 13

Using Trademarks 15

Enforcing Trademarks 18

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2.

3.

4.

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1. Trademarks

What is a Trademark?A trademark is generally defined as asign capable of distinguishing goods orservices produced or provided by oneenterprise from those provided byother enterprises.

The Malawi Trademark Act defines atrademark as “a mark used orproposed to be used in relation togoods for the purpose of indicating, orso as to indicate, the connectionbetween goods and some personhaving the right either as a proprietoror as registered user to use the mark,whether with or without any indicationof the identity of that person, andmeans, in relation to a certificationtrademark, mark registered ordeemed to have been registeredunder Section 42 of the Act.

According to the Act, a trademarkincludes a device, brand, heading,label, ticket, name, signature, word,letter, numeral or any combinationthereof”.

The Malawi Trademark Act allowsregistration of single colours, threedimentional signs, logotypes andcombination of lettes but does notallow registration of slogans, smellsand sounds.

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What are trademarks for?The main function of a trademark is toenable consumers to identify a product(whether goods or services) of aparticular company so as to distinguish itfrom other identical or similar productsprovided by other competingcompanies. Consumers who aresatisfied with a given product are likelyto buy or use it again in future. For thisreason, consumers need to be able todistinguish easily between identical orsimilar products. By enabling companiesto differentiate themselves and theirproducts from those of competingcompanies, trademarks play a pivotal

role in branding and marketingstrategies of companies, therebycontributing to the definition of theimage, and reputation of the company’sproducts in the eyes of consumers. Theimage and reputation of a companycreate trust which is the basis forestablishing a loyal clientele andenhancing a company's goodwill.Consumers often develop an emotionalattachment to certain trademarks, basedon a set of desired qualities or featuresembodied in the products bearing suchtrademarks.

Trademarks also provide an incentive forcompanies to invest in maintaining orimproving the quality of their products inorder to ensure the products bearingtheir trademark have a positivereputation.

The Value of TrademarksA carefully selected and nurturedtrademark is a valuable business assetfor most companies. For some, it maybe the most valuable asset they own.Trademarks are important for thesuccess of a product in a market. Acompany with a good trademark has acompetitive edge over othercompetitors. Consumers tend to buyproducts or get services of a company ifits trademark is of quality and it meetstheir expectations. For instance, inMalawi, consumers are earger andwilling to buy a drink bearing thetrademark of “Cocacola” because theyvalue the trademark, its reputation, its

Example of combination of letters

Example of a word

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value the trademark, its reputation, itsimage and its qualities. Customers tendto associate with the trademark and arethus willing to pay for the drink bearingthe trademark. Therefore, if a companyowns a trademark with a good image andreputation it will have a competitive edgeon the market.

Why should your company protectits trademark(s)?While most businesses realize theimportance of using trademarks todifferentiate their products from those oftheir competitors, not all realize theimportance of protecting trademarksthrough registration.

Registering a trademark under theMalawi Trademark Act gives yourcompany the exclusive right to preventothers from marketing identical orsimilar products under the same or aconfusingly similar trademark.

Without trademark registration, yourinvestment in marketing a product maybecome wasteful as rival companiesmay use the same or a confusinglysimilar trademark for an identical orsimilar product. If a competitor adopts asimilar or identical trademark, customerscould be misled into buying thecompetitor’s product thinking it is yourcompany’s product. This may not onlydecrease your company’s profits andconfuse your customers, but it may alsodamage the reputation and image of

your company, particularly if the rivalproduct is of inferior quality.

Given the value of trademarks and theimportance that a trademark may havein determining the success of a productin the marketplace, it is critical to makesure that it is registered in the relevantmarket(s). Also, it is much easier tolicense a registered trademark to othercompanies and this may provide anadditional source of revenue for yourcompany. Licencing a trademark maybe a basis for a franchising agreement.

Sometimes, a registered trademark witha good reputation among consumersmay also be used to obtain funding fromfinancial institutions that are aware ofthe importance of brands for businesssuccess.

Trademarks: SummaryTo sum up, trademarks are importantfor the success of a business becausethey:

enable consumers to distinguishbetween products;enable companies to differentiatetheir products;are a marketing tool and the basisfor building a brand image andreputation;may be licensed to provide a directsource of revenue through royalties;are a crucial component offranchising agreements;may be a valuable business asset;

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maintaining or improving productquality;may be useful for obtaining financialassistance.

2. Protecting Trademarks

How can your company protectits trademark(s)?In Malawi, trademark protection isobtained through registration at theOffice of Registrar of Trademarks in theDepartment of the Registrar General. Toapply for registration of a trademark, anapplicant must fill in Form TM. No.2. Aregistered trademark gets strongerprotection when there are conflicts: ifother people use similar or identicaltrademarks. The services of atrademark agent are often very usefulalthough not compulsory to help in theregistration of a trademark.

Is the registration of the trade nameof your company sufficient?Many people believe that by registeringtheir business and its trade name at thebusiness registry, the name would alsobe automatically protected as atrademark. This is a rather commonmisconception. It is important tounderstand the difference between tradenames and trade marks.

A trade name is the full name of yourbusiness, such as “Southern BottlersLtd”. A trade name often ends with Ltd orother similar abbreviations that denotethe legal character of the company.

A trademark, however, is a sign thatdistinguishes the product(s) of yourcompany from those of the othercompanies. A company may haveseveral products. For instance, inMalawi, Southern Bottlers Ltd sellsCocacola as one of its products andalso sells Fanta as another product.Companies may use a specifictrademark to identify all their products, aparticular range of products or onespecific type of product. Somecompanies may also use their tradename, or a part of it, as a trademark.

Who is authorized to applyfor trademark registration?According to the Malawi Trademark Act,an application for Trademarkregistration must be made by a personwho claims to be the proposedproprietor of the Trademark.

A person who intends to use the trademark, or a trademark agent employedby the proprietor may also make anapplication for Trademark registration.The proprietor of the Trademark can beeither an individual or a company.

Is it compulsory to registera company's trademarks?In Malawi, it is not compulsory to registera Trademark. However, it is advisable toregister your Trademark in order for it toenjoy legal protection. When you registeryour Trademark, you get exclusive rightsto use the Trademark for particular

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goods and to prevent others from usingthe Trademark without priorauthorisation.

What are the main reasonsfor rejecting an application?While selecting a trademark it is helpfulto know which categories of signs areusually not acceptable for registration.In Malawi, applications for trademarkregistration are usually rejected on whatare commonly referred to as“absolute grounds” in the followingcases:

Prohibited words in Marks. Theword “Anzac” may not appear on atrademark for whose registration anapplication is being made.

Deceptive matter. It is not lawful toregister as a trademark or part of atrademrk any matter which is likelyto deceive or cause confusion and iscontrary to the law or morality, or anyscandalous design.

Identical and resembling designs areprohibited for registration.

The words “Patent,” “patented,”“Registered,” “Registered Design,”“Copyright,” “Entered at StationedHall,” “To conterfeit this is forgery.”

A representation of the President orany colourable imitations thereof.The words “Red Cross” or “Geneva

Cross”, and the representations ofthe Geneva and other crosses in red,or of the Swiss Federal cross inwhite or red ground or silver or on ared ground, or such representationsin a similar colour or colours.

Flags, armorial bearings, insignia,orders of chivalry, decorations officialhallmarks and emblems of states,cities, borough, town, place, society,body corporate, institution or person.

Applications for registration oftrademarks are also rejected on“relative grounds”. This is when thetrademark conflicts with prior trademarkrights. Having two identical (or verysimilar) trademarks for the same type ofproduct could cause confusion amongconsumers. The Malawi TrademarkOffice in the Department of theRegistrar General checksfor conflict with existing marks,including unregistered well-knownmarks as a regular part of theregistration process. If the trademark isconsidered to be identical or confusinglysimilar to an existing one for identical orsimilar products, it will be rejected orcancelled.

What should be kept in mind when selectingor creating a trademark?Selecting or creating an appropriatetrademark is a critical step as it is animportant element of the marketingstrategy of your business. So what is

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an appropriate trademark for yourproduct(s)? The following five-pointchecklist may be useful when selectingor creating your trademark.

Five Point Checklist for SelectingYour Trademark

Check that your trademark of choicemeets all the legal requirements forregistration.

Do a trademark search to make surethat it is not identical or confusinglysimilar to existing trademarks.

Make sure the trademark is easy toread, write, spell and remember andis suitable to all types of advertisingmedia.Make sure that the trademark doesnot have any undesiredconnotations in your own languageor in any of the languages ofpotential export markets.Check that the correspondingdomain name (i.e. Internet address)

is available for registration.

Registering a Trademark - Step by Step

The ApplicantA person who claims to be the proposedproprietor of a Trademark and wishes toregister a Trademark must make awritten application to the Registrar ofTrademarks at the Department ofRegistrar General. The applicant mustfill in Form TM No. 2. The applicationshould include contact details of yourcompany, a graphic illustration of theTrademark and a description of thegoods and services and/or class(es) forwhich the company wishes to obtainTrademark registration. Also, theapplicant must pay the prescribedregistration fees.

The Trademark OfficeWhen the Office of Registrar ofTrademarks receives the application forregisration of a trademark, it allocatesan application number.

Formal examination: the Office of theRegistrar of Trademarks examines theapplication to make sure that it complieswith the administrative requirements orformalities. The Office of Registrar ofTrademarks checks whether theapplication fee has been paid and theapplication form has been filed in theprescribed manner.

Substantive examination: the Office ofthe Registrar of Trademarks examines

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the application to verify whether itcomplies with all the substantiverequirements. The Registrar ofTrademarks checks whether theTrademark belongs to a category whichis excluded from registration by theMalawi Trademark Act and whether theTrademark is in conflict with an existingTrademark on the register in therelevant class(es). The Registrar alsochecks whether the application formhas been filled in the prescribed mannerand whether prescribed application feeshave been paid.

Publication and opposition: Once theRegistrar of Trademarks accepts theTrademark, the applicant then sendsthe mark for advertising in the MalawiGovernment Gazette for 3 months. Ifthere is no opposition within the threemonths, or if the opposition is overcome,the applicant applies for registrationusing Form TM No. 10 and the Registrarof Trademarks issues a certificate ofregistration Form TM No. 11.

Registration: Registration for atrademark is for 7 years and theeffective date is the date of applicationfor registration.

Renewal: the Trademark may berenewed by filling a renewal Form TMNo. 12 after paying renewal fees.Renewal is valid for 14 years.

How long does it take to registera trademark?Registration for trademark protection in

Malawi is expected to be completedwithin twelve months from the date ofapplication. If the applicant defaults, theRegistrar may, after giving notice ofnon-completion to the applicant inwriting, treat the application asabandoned, unless it is completedwithin the time prescribed in the notice.

What are the costs associated withtrademark creation, protection and use?There are a number of costs associatedwith creation, protection and use of aTrademark. These costs are listedbelow.

There are costs for creating a logo orword to be used as a Trademark..There are costs for conducting aTrademark search.There are costs for registering aTrademark which vary depending onthe category of products. The MalawiTrademark Office will provide youwith the detailed costs for registeringa Trademark.There are costs for paying aTrademark Agent who may be hiredto assist you in the registrationprocess.

How can you find out if your chosentrademark might conflict with otherregistered trademarks? What is a trademarksearch?After receiving an application for theregistration of a Trademark for specificgoods, the Registrar of Trademarks willdirect that a search be conductedamongst the registered marks pendingapplications in order to ascertain

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goods and/or services for which you wishto register your trademark and to groupthem according to classes. Thetrademark classification system allows forthe orderly storage of data on registeredtrademarks according to the types ofgoods or services. This makes it easier toretrieve information from trademarkdatabases. It is critical to register yourtrademark in all classes in which youintend to use your trademark.

The classification system used inMalawi is the International TrademarkClassification system (called Nicesystem for classification of word marks),which has 34 classes for goods and 11classes for services. Detailedinformation about the Nice classificationsystem is in Annex III of this book. Youcan also get more information from theRegistrar of Trademarks at theDepartment of Registrar General.

applications in order to ascertainwhether there are on the registeridentical or similar Trademarks.

You can do a trademark searchyourself, or you can hire a TrademarkAgent. Remember that such atrademark search is preliminary. At thisstage, it may not be possible to knowthat your trademark is not confusinglysimilar to existing registeredtrademarks. This is why it is important toget guidance of an experiencedtrademark agent.

Before you go to a Trademark Agent,check with the Trademark Office as partof your preliminary trademark search.There are a number of costs associatedwith the creation, protection and use ofa Trademark.. These costs are listedbelow. The costs have been presentedin the preceeding section of this chapterof this book.

A Well-classified SystemTrademarks are grouped into “classes”according to the type of goods orservices they serve to identify. Theclassification system is in Annex III ofthis book. You may therefore beginyour Trademark serach by familiarizingyourself with the 45 different trademarkclasses.The Malawi Trademark Act requires thatwhen filling in your Trademarkapplication form, you must indicate the

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Outsourcing Trademark CreationDesigning a trademark is a creativeprocess. Therefore, when the creationof a trademark is outsourced, it isusually best to clarify issues of copyrightownership in the original agreementand make sure that the copyright overthe trademark is formally assigned toyour company.

Is trademark registration in Malawi validinternationally?The legal rights arising out of atrademark registration is limited to theterritory to which they pertain. So,ordinarily, valid registration of atrademark in Malawi gives you rightsonly in Malawi. According to the MalawiTrademark Act, the legal protection andrights arising out of a trademarkregistration apply within Malawi territoryonly. This means that valid registrationof a trademark in Malawi gives yourights in Malawi only except where thetrademark is a well-known trademark. Awell-known trademark isconsidered to be well-known by theauthority where you want to register thetrademark. Well-known marks areconsidered protected even if they not

Do you need a trademark agent to filea trademark application?It is not a requirement to hire aTrademark Agent to file an applicationfor registration of a trademark. Anapplication for registration of atrademark may be filed by a proprietoror a registered user himself. However,the proprietor or registered user of atrademark may appoint a TrademarkAgent to act for him on any issuesconcerning trademark including filing aTrademark application Form TM No. 1for registration. When a proprietorappoints an agent, he will sign and sendto the Registrar of Trademarks a writtenauthority. The Trademark Agent maysign all documents, may make allcommunication between the applicantand the Registrar of Trademarks at TheDepartment of Registrar General, andmay represent the applicant at allmeetings. The Registrar of Trademarksat The Department of Registrar Generalwill advise you if you need to berepresented by a Trademark Agent andwill give you a list of approved andregistered trademark agents in Malawi.

For how long is your registered trademarkprotected?In Malawi, registered trademarks areprotected for a period of seven (7)years, and may be renewed from time totime. Registration of the trademark maybe renewed for a period of 14 yearsfrom the date of expiration of theoriginal registration or the date of thelast renewal of registration.

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considered protected even if it is notregistered in a given country.

Should you consider protecting yourtrademark abroad?All the main reasons for registering yourtrademark in your home country alsoapply to the commercialization of yourproducts in foreign markets. It istherefore highly advisable to register yourtrademark abroad if you wish to grant alicense to use the trademark in thosecountries. Exporting goods bearing adistinctive trademark will enable yourproducts to be recognized in foreignmarkets, allowing your company to builda reputation and image among foreignconsumers, which may result in higherprofits.

How can you register the trademarkof your company abroad?

Once you have registered thetrademark of your company in Malawi,there are three main ways to register thetrademark in other countries:

The National Route: you may apply tothe Office of the Registrar ofTrademarks at The Department ofRegistrar General for trademarkprotection. As indicated earlier, theRegistrar of Trademarks may require youto use the services of a locally-basedtrademark agent for this purpose.

The Regional Route: if you wish toapply for protection in countries whichare members of a regional trademarksystem you may apply for registration inmember countries by filing anapplication at the Office of Registrar ofTrademarks at the Department ofRegistrar General. The regionaltrademark offices are:

The African Regional IndustrialProperty OfficeThe Benelux Trademark OfficeThe Office for the Harmonization ofthe Internal Market of the EuropeanUnionThe Organisation Africaine de laPropriété Intellectuelle.

The International Route: Malawi is amember of the Madrid system. If youregister or apply for your trademarkregistration in Malawi, you may use theMadrid system (administered by WIPO)to register your trademark in more than70 countries that are party to thesystem.

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3. Types of Trademarks

What are trademarksWe have learnt that trademarks aresymbols used to distinguish goods orservices of one enterprise from those ofthe other. There are three types oftrademarks namely: service markscollective marks and certification marks.

What are service marks?A service mark is very similar in nature to atrademark. Both are distinctive signs. ATrademark distinguishes goods of oneenterprise from those of others, while aservice mark fulfils the same function inrelation to services. Services may be of anykind, such as financial, banking, travel,advertising or catering. Service marks canbe registered, renewed, cancelled, assignedand licensed under the same conditions astrademarks.

What are collective marks?A collective mark is owned byan association or cooperative whosemembers may use the collective markto market their products. Collectivemarks are used to distinguish goods orservices produced or provided bymembers of an association. Collectivemarks may be an effective way of jointlymarketing productsof a group of enterprises which may findit more difficult for their individual marksto be recognized by consumers and/orhandled by the main distributors.

Advantages of using the Madrid systemThe principal advantages of using theMadrid system are that the trademarkowner can register his trademark in allthe countries that are party to thesystem by filing:

a single international application;one application in one language;an application subject to one set offees and deadlines.

Thereafter, the international registrationcan be maintained and renewedthrough a single procedure. You canfind more information on internationalregistration of marks either at theTrademark Office or on the WIPOwebsite: www.wipo.int/madrid/. A list of theMember countries of the Madrid systemis available in Annex IV of this book.

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What are certification marks?Certification marks are given forcompliance with defined standards, butare not confined to any membership.They may be used by anyone whoseproducts meet certain establishedstandards. In Malawi, certification marksare issued by the Malawi Beareu ofStandards to companies andorganisations that meet certain setquality standards for their products.

The Beareu of Standards is an entity setup by Government of Malawi to certify”products of companies before they goon the market. Thus, the MBS symbolmeans that the product is certified forquality to go on the market. Anotherexamble is the Woolmark symbol whichis a registered trade (certification) markof the Woolmark Company. TheWoolmark is a quality assurance symboldenoting that the products on which it isapplied, are made from 100% new wooland comply with strict performancespecifications set down by theWoolmark Company. The company is

registered in over 140 countries and islicensed to manufacturers who are ableto meet these quality standards in 65countries.

What are well-known marks?Well-known marks are marks that areconsidered to be well-known by theTrademark Office. Well-known marksbenefit from stronger protection.Well-known marks may be protectedeven if they are not registered. Whilemarks are protected against confusinglysimilar marks if used for identical orsimilar products, well-known marks areprotected against confusingly similarmarks as well for dissimilar products, ifcertain conditions are met. The mainpurpose of this stronger protection is toprevent companies from free-riding onthe reputation of a well-known markand/or causing damage to its reputationor goodwill.

As an example, let us assume thatCOCACOLA is the famous trademark ofa soft drink. Wondercola Ltd would thenbenefit from automatic protection inMalawi where well-known marks enjoystronger protection and where the markis well-known for soft drinks. Theprotection would also be available forunrelated goods and services. Ifanother company decides to marketother products ranging from T-shirts tosunglasses, using the COCACOLAmark, it will have to seek authorizationof Wondercola Ltd or risk being sued forinfringement of trademark rights.

Courtesy: The Woolmark Company

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4. Using Trademarks

Can you register a trademark without havingused it?The Trademark Act in Malawi requiresthat you should apply for registration of atrademark before you have used it. Inaddition, the trademark may be removedfrom the register if it has not been usedfor one month before the date of theapplication and up to five years afterregistration. When a trademark isremoved from the register, youautomatically lose your rights in yourtrademark.

TM or ®?The use of ®, TM, SM or equivalentsymbols next to a trademark is not arequirement in Malawi and generallyprovides no further legal protection.Nevertheless, it may be a convenientway of informing others that a given signis a trademark, thus warning possibleinfringers and counterfeiters. The ®symbol is used once the trademark hasbeen registered, whereas “TM” denotesthat a given sign is a trademark. The“SM” symbol is sometimes used forservice marks.

How should you use trademarksin advertising?If your mark is registered with a specificdesign or font, make sure that thetrademark is used exactly as it isregistered. You should closely monitorthe use of your mark as it is crucial forthe image of your company’s products.

Can your company use the same trademarkfor different products?Different trademarks may be used fordifferent products lines of a company.Depending on its branding strategy,each company will decide whether touse the same trademark for its products,extending the brand every time a newproduct is released, or to use a differentmark for each product line. For example,Carlsburg is a trademark for CarlsburgCompany in Malawi. However, thetrademark is also used to brand anumber of products for the companynamely: Carslburg Green, CarslburgElephant, Carlsburg Stout etc. Extendingan existing brand to new productsenables the new product to benefit from theimage and reputation of the mark.However, the use of a new mark, mayalso prove advantageous and may enablethe company to target a specificcustomer group or to create a specificimage for the new product line.

Whatever strategy you choose, makesure that your trademark is registeredfor all categories of goods and/orservices for which it is, or will be used.

What should be kept in mind when usingtrademarks on the Internet?The use of trademarks on the Internethas raised a number of controversiallegal problems with no easy or uniformsolution. One big problem stems fromthe fact that trademark rights areterritorial and thus are only protected inthe country or region where the mark

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has been registered, whereas the reachof the Internet is global. This createsproblems when it comes to settlingdisputes between persons orcompanies legitimately owningidentical or confusingly similartrademarks for identical or similargoods or services in different countries.Legislation in this area is stilldeveloping in Malawi.

What is a domain name and how does itrelate to trademarks?Domain names are not the same astrademarks. Domain names areInternet addresses, and are commonlyused to find websites. For example,the domain name ‘wipo.int’ is usedto locate the WIPO website atwww.wipo.int. Over time however,domain names have come to constitutebusiness identifiers thus often cominginto conflict with trademarks. TheTrademark Act treats registration of thetrademark of another company orperson as a domain name only totransfer or to cancel it later.

Therefore, it is important that youchoose a domain name which is not thetrademark of another company. Inparticular, do not choose a well-knowntrademark. In order to find out whethera particular trademark is alreadyprotected, you can directly contact theTrademark Office or regional trademarkoffices. A list of databases for regionaltrademark offices is available onWIPO’s website at:www.arbiter.wipo.int/trademark/.

If the trademark of your company isbeing used as a domain name or isbeing cybersquatted by anotherindividual or company then you maytake action to stop misuse/infringementof the rights of your company. Oneoption would be to use WIPO’s onlineadministrative procedure for domainname dispute resolution at:www.arbiter.wipo.int/domains/. The WIPOwebsite includes a model complaint aswell as a legal index to the thousands ofWIPO domain name cases that havealready been decided.

Can you license your trademarkto other companies?The Malawi Trademark Act provides forlicensing of a trademark to othercompanies. Licensing a trademark hasadvantages. It enables you to entersome markets and provides you or yourcompany with additional sources orrevenue for your business. When atrademark is licensed to other people,the trademark owner still retainsownership and merely agrees to the use

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ownership of the trademark and merelyagrees to the use of the trademark byother people or companies. This isusually done on payment of royalties andthe consent of the trademark owner isusually specified in a formal licensingagreement. Depending on the nature ofthe agreement, the licensor oftenretains some degree of control over thelicensee to guarantee or maintainquality assurance.

In practice, trademark licenses arefrequently granted within broaderlicensing such as franchisingagreements or agreements involvinglicensing of intellectual property rightsnamely patents and know-how.Trademark licences are also grantedfor technical assistance for production ofa particular product.

What does a franchising agreement have todo with trademarks?The licensing of a trademark is centralto a franchising agreement. Infranchising agreements the degree ofcontrol of the trademark owner overthe franchisee is generally greater thanis the case for standard trademarklicensing agreements. In Franchising,the franchiser allows another person(the franchisee) to use his way of doingbusiness (including trademarks, know-how, customer service, software, shopdecoration, etc.) in accordance with aset of prescriptions and in exchangeforcompensation or royalty.

For example a restaurant sellingchicken meals operates in Malawiunder the trademark NANDO’S. It hasdeveloped a system for preparing andselling these products which are sold inlarge volumes and in a uniform manner.The system includes various factorsthat contribute to the success ofNANDO’S restaurants including recipesand methods of preparing meals thatresult in a product of consistent quality,

Courtesy: Nando’s Group Holdings Ltd

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the design of employees’ uniforms, thedesign of the buildings, the design ofpackaging, and management andaccounting systems. NANDO’S impartsits knowledge and experience to itsfranchisees and retains the right tosupervise and control local franchises.As a crucial component of thefranchising agreement, the franchiseeswill also be authorized and obliged to usethe NANDO’S trademark.

Is there any restriction in selling or assigningthe trademark of your company to anothercompany?The Malawi Trademark Act does notimpose any restriction on selling orassigning your trademark. The Actstates that a registered trademark isalways regarded as having beenassignable and transmissible. Aproprietor seeking to assign atrademark should submit an applicationto the Registrar of Trademarks on FormTM. No. 16. If there is no objection, theproprietor should apply using Form TMNo. 40 for a certificate of assignment.

Do you need to register all smallmodifications to your trademark?Many trademarks, including some of themost famous, have slightly changed orevolved over the years in order tomodernize the image ofa company or to adapt to newadvertising media. The Trademark Act inMalawi allows changes or adaptations tobe made to a trademark. The proprietor

of a trademark can apply for registrationof small modifications to his trademarkthat do not substantially affect theidentity of the trademark. A prorietorwishing to to apply for modifications to atrademark must use Form TM. No. 46 foramendments. The Registrar ofTrademarks may accept or refuse theapplication for registration for smallmodifications to a registered trademark.You must consult the Trademark Officeor a competent trademark agent as towhether a specific change will requiresubmission of a new application andpayment of relevant fees.

5. EnforcingTrademarks

What should your business do if itstrademark is being used by others withoutauthorization?The responsibility of enforcing atrademark is mainly on the trademarkowner. It is up to a trademark owner toidentify any infringement and to decidewhat measures to take in order toenforce trademark rights.

It is important to seek expert advice ifyou believe that someone is infringingyour trademark. You should seekadvice and information from anintellectual property lawyer on existingoptions in Malawi and neighboringcountries to initiate action againstcounterfeiting and infringement. Thelawyer will advise you on how to

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enforce your Trademark rights.

If there is an infringement of yourtrademark rights, you may begin toenforce your Trademark rights bysending a letter to the alleged infringerinforming him/her of the possibleexistence of a conflict. A trademarklawyer should assist you in writing sucha letter.

If you think that the infringement iswilful and you know the location whereit occured, you may take a surpriseaction by obtaining, with the help of atrademark lawyer, a search and seizeorder from the Malawi High Court orfrom the Malawi Police to conduct a raidwithout prior notice to the allegedoffender. The infringer may becompelled by the courts to inform you ofthe identity of persons involved in theproduction and distribution of theinfringing goods or services and theirchannels of distribution. The courts mayorder, upon your request, that infringinggoods and materials be destroyed orthrown away without any compensation.

There are measures at the borders thatcan be used to prevent importation ofcounterfeit trademark goods. Thetrademark owner must seek help of thecustoms authorities at the borderbefore the counterfeit goods aredistributed in the country concerned.You are required to pay prescribed fees,to get assistance of customs authorities.

In some instances, an effective way ofdealing with infringement is througharbitration or mediation out of court.The advantage of arbitration is that it isless formal, it is shorter and cheaperthan court proceedings.

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ANNEX II – Internet AddressesNational and Regional Intellectual Property Offices

African Intellectual Property Organization www.oapi.wipo.netAlgeria www.inapi.orgAlbania www.alpto.gov.alAndorra www.ompa.adArgentina www.inpi.gov.arArmenia www.armpatent.orgAustralia www.ipaustralia.gov.auAustria www.patent.bmvit.gv.atBahrain www.gulf-patent-office.org.sa/bahrainframe.htmBarbados www.caipo.orgBelarus www.belgospatent.org/english/about/history.htmlBelgium www.mineco.fgov.beBelize www.belipo.bzBenelux www.boip.intBenin www.oapi.wipo.netBolivia www.senapi.gov.boBotswana www.aripo.orgBrazil www.inpi.gov.brBulgaria www.bpo.bgBurkina Faso www.oapi.wipo.netBurundi www.oapi.wipo.netCambodia www.moc.gov.khCameroon www.oapi.wipo.netCanada www.opic.gc.caCentral African Republic www.oapi.wipo.netChad www.oapi.wipo.netChile www.dpi.clChina www.sipo.gov.cnChina (Hong Kong -SAR) www.ipd.gov.hkChina (Macao) www.economia.gov.moChina (Marks) www.saic.gov.cnColombia www.sic.gov.coCongo www.oapi.wipo.netCosta Rica www.registronacional.go.cr

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Côte d’Ivoire www.oapi.wipo.netCroatia www.dziv.hrCuba www.ocpi.cuCyprus www.mcit.gov.cy/mcit/drcor/drcor.nsfCzech Republic www.upv.czDemocratic Republic of the Congo www.oapi.wipo.netDenmark www.dkpto.dkDominican Republic www.seic.gov.do/onapiEgypt www.egypo.gov.egEl Salvador www.cnr.gobs.svEstonia www.epa.eeEurasian Patent Office www.eapo.orgEuropean Union (Office for Harmonization

in the Internal Market – OHIM) www.oami.eu.intFinland www.prh.fiFrance www.inpi.frGabon www.oapi.wipo.netGambia www.aripo.orgGeorgia www.sakpatenti.org.geGermany www.dpma.deGhana www.aripo.orgGreece www.obi.grHonduras www.sic.gob.hn/pintelec/indice.htmHungary www.mszh.hu/english/index.htmlIcelandwww.patent.is/focal/webguard.nsf/key2/indexeng.htmlIndia www.ipindia.nic.inIndonesia www.dgip.go.idIreland www.patentsoffice.ieIsrael www.justice.gov.ilItaly www.uibm.gov.itJamaica www.jipo.gov.jmJapan www.jpo.go.jpJordan www.mit.gov.joKazakhstan www.kazpatent.org/englishKenya www.aripo.orgKuwait www.gulf-patent-office.org.sa

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Serbia www.yupat.sv.gov.yuSierra Leone www.aripo.orgSingapore www.ipos.gov.sgSlovak Republic www.indprop.gov.skSlovenia www.uil-sipo.si/Default.htmSomalia www.aripo.orgSouth Africa www.cipro.gov.zaSpain www.oepm.esSudan www.aripo.orgSwaziland www.aripo.orgSweden www.prv.seSwitzerland www.ige.chSyrian Arab Republic www.himaya.netTajikistan www.tipat.orgThailand www.ipthailand.orgThe Former Yugoslav Republic

of Macedonia www.ippo.gov.mkTogo www.oapi.wipo.netTrinidad and Tobago www.ipo.gov.tt/home.aspTunisia www.inorpi.ind.tnTurkey www.turkpatent.gov.trTurkmenistan www.eapo.orgUganda www.aripo.orgUkraine www.sdip.gov.uaUnited Arab Emirates www.gulf-patent-office.org.saUnited Kingdom www.patent.gov.ukUnited Republic of Tanzania www.aripo.orgUnited States www.uspto.govUruguay www.dnpi.gub.uyUzbekistan www.patent.uzVenezuela www.sapi.gov.veYemen www.most.org.yeZambia www.aripo.orgZimbabwe www.aripo.org

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Annex I – Useful websites

For more information on:

• intellectual property issues from a business perspectivewww.wipo.int/sme

• trademarks in generalwww.wipo.int/about-ipwww.inta.org (International Trademark Association)

• the practical aspects relating to the registration of trademarks see Annex II orwww.wipo.int/directory/en/urls.jsp

• Madrid system for the International Registration of Markswww.wipo.int/madrid

• International Classification of Goods and Services for the Purposes of theRegistration of Marks under the Nice Agreement

www.wipo.int/classifications (under Nice Agreement)

• International Classification of the Figurative Elements of Marks under theVienna Agreement

www.wipo.int/classifications (under Vienna Agreement)

• the conflict between trademarks and domain names and on alternative disputeresolution procedures for domain names

www.arbiter.wipo.int/domainswww.icann.org.

A list of the online trademark databases maintained by industrial property officesthroughout the world is available at www.arbiter.wipo.int/trademark

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ANNEX II – Internet AddressesNational and Regional Intellectual Property Offices

African Intellectual Property Organization www.oapi.wipo.netAlgeria www.inapi.orgAlbania www.alpto.gov.alAndorra www.ompa.adArgentina www.inpi.gov.arArmenia www.armpatent.orgAustralia www.ipaustralia.gov.auAustria www.patent.bmvit.gv.atBahrain www.gulf-patent-office.org.sa/bahrainframe.htmBarbados www.caipo.orgBelarus www.belgospatent.org/english/about/history.htmlBelgium www.mineco.fgov.beBelize www.belipo.bzBenelux www.boip.intBenin www.oapi.wipo.netBolivia www.senapi.gov.boBotswana www.aripo.orgBrazil www.inpi.gov.brBulgaria www.bpo.bgBurkina Faso www.oapi.wipo.netBurundi www.oapi.wipo.netCambodia www.moc.gov.khCameroon www.oapi.wipo.netCanada www.opic.gc.caCentral African Republic www.oapi.wipo.netChad www.oapi.wipo.netChile www.dpi.clChina www.sipo.gov.cnChina (Hong Kong -SAR) www.ipd.gov.hkChina (Macao) www.economia.gov.moChina (Marks) www.saic.gov.cnColombia www.sic.gov.coCongo www.oapi.wipo.netCosta Rica www.registronacional.go.cr

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Côte d’Ivoire www.oapi.wipo.netCroatia www.dziv.hrCuba www.ocpi.cuCyprus www.mcit.gov.cy/mcit/drcor/drcor.nsfCzech Republic www.upv.czDemocratic Republic of the Congo www.oapi.wipo.netDenmark www.dkpto.dkDominican Republic www.seic.gov.do/onapiEgypt www.egypo.gov.egEl Salvador www.cnr.gobs.svEstonia www.epa.eeEurasian Patent Office www.eapo.orgEuropean Union (Office for Harmonization

in the Internal Market – OHIM) www.oami.eu.intFinland www.prh.fiFrance www.inpi.frGabon www.oapi.wipo.netGambia www.aripo.orgGeorgia www.sakpatenti.org.geGermany www.dpma.deGhana www.aripo.orgGreece www.obi.grHonduras www.sic.gob.hn/pintelec/indice.htmHungary www.mszh.hu/english/index.htmlIcelandwww.patent.is/focal/webguard.nsf/key2/indexeng.htmlIndia www.ipindia.nic.inIndonesia www.dgip.go.idIreland www.patentsoffice.ieIsrael www.justice.gov.ilItaly www.uibm.gov.itJamaica www.jipo.gov.jmJapan www.jpo.go.jpJordan www.mit.gov.joKazakhstan www.kazpatent.org/englishKenya www.aripo.orgKuwait www.gulf-patent-office.org.sa

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Lao People’s Democratic Republic www.stea.la.wipo.netLatvia www.lrpv.lvLebanon www.economy.gov.lbLesotho www.aripo.orgLiechtenstein www.european-patent-office.orgLithuania www.vpb.ltLuxembourg www.etat.lu/ecMalawi www.aripo.orgMalaysia www.mipc.gov.myMali www.oapi.wipo.netMexico www.impi.gob.mxMonaco www.european-patent-office.org/patlib/country/monacoMontenegro www.yupat.sv.gov.yuMorocco www.ompic.org.maMozambique www.aripo.orgNamibia www.aripo.orgNepal www.ip.np.wipo.netNetherlands www.octrooicentrum.nlNew Zealand www.iponz.govt.nzNiger www.oapi.wipo.netNorway www.patentstyret.noOman www.gulf-patent-office.org.saPanama www.digerpi.gob.paPeru www.indecopi.gob.pePhilippines www.ipophil.gov.phPolandwww.business.gov.pl/Intellectual,property,protection,90.htmlPortugal www.inpi.ptQatar www.gulf-patent-office.org.saRepublic of Korea www.kipo.go.krRepublic of Moldova www.agepi.mdRomania www.osim.roRussian Federation www.rupto.ruSaint Vincent and the Grenadines 196.1.161.62/govt/cipo/index.aspSaudi Arabia www.gulf-patent-office.org.saSenegal www.oapi.wipo.net

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Serbia www.yupat.sv.gov.yuSierra Leone www.aripo.orgSingapore www.ipos.gov.sgSlovak Republic www.indprop.gov.skSlovenia www.uil-sipo.si/Default.htmSomalia www.aripo.orgSouth Africa www.cipro.gov.zaSpain www.oepm.esSudan www.aripo.orgSwaziland www.aripo.orgSweden www.prv.seSwitzerland www.ige.chSyrian Arab Republic www.himaya.netTajikistan www.tipat.orgThailand www.ipthailand.orgThe Former Yugoslav Republic of Macedonia www.ippo.gov.mkTogo www.oapi.wipo.netTrinidad and Tobago www.ipo.gov.tt/home.aspTunisia www.inorpi.ind.tnTurkey www.turkpatent.gov.trTurkmenistan www.eapo.orgUganda www.aripo.orgUkraine www.sdip.gov.uaUnited Arab Emirates www.gulf-patent-office.org.saUnited Kingdom www.patent.gov.ukUnited Republic of Tanzania www.aripo.orgUnited States www.uspto.govUruguay www.dnpi.gub.uyUzbekistan www.patent.uzVenezuela www.sapi.gov.veYemen www.most.org.yeZambia www.aripo.orgZimbabwe www.aripo.org

Note:For up-to-date information visit website at the following urls:www.wipo.int/members/en/ andwww.wipo.int/directory/en/urls.jsp

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Note:For up-to-date information visit website at the following urls: www.wipo.int/members/en/andwww.wipo.int/directory/en/urls.jsp

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Annex III – Nice ClassificationInternational Classification of Goods and Services for the Purposesof the Registration of Marks under the Nice Agreement

Goods

1. Chemicals used in industry, science and photography, as well as in agriculture,horticulture and forestry; unprocessed artificial resins, unprocessed plastics;manures; fire extinguishing compositions; tempering and solderingpreparations; chemical substances for preserving foodstuffs; tanningsubstances; adhesives used in industry.

2. Paints, varnishes, lacquers; preservatives against rust and against deteriorationof wood; colorants; mordents; raw natural resins; metals in foil and powder formfor painters, decorators, printers and artists.

3. Bleaching preparations and other substances for laundry use; cleaning,polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,cosmetics, hair lotions; dentifrice.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and bindingcompositions; fuels (including motor spirit) and illuminants; candles and wicksfor lighting.

5. Pharmaceutical and veterinary preparations; sanitary preparations for medicalpurposes; dietetic substances adapted for medical use, food for babies;plasters, materials for dressings; material for stopping teeth, dental wax;disinfectants; preparations for destroying vermin; fungicides, herbicides.

6. Common metals and their alloys; metal building materials; transportablebuildings of metal; materials of metal for railway tracks; non-electric cables andwires of common metal; ironmongery, small items of metal hardware; pipes andtubes of metal; safes; goods of common metal not included in other classes;ores.

7. Machines and machine tools; motors and engines (except for land vehicles);machine coupling and transmission components (except for land vehicles);agricultural implements other than hand-operated; incubators for eggs.

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8. Hand tools and implements (hand-operated); cutlery; side arms; razors.

9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing,measuring, signaling, checking (supervision), life-saving and teaching apparatusand instruments; apparatus and instruments for conducting, switching,transforming, accumulating, regulating or controlling electricity; apparatus forrecording, transmission or reproduction of sound or images; magnetic datacarriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processingequipment and computers; fire-extinguishing apparatus.

10. Surgical, medical, dental and veterinary apparatus and instruments, artificiallimbs, eyes and teeth; orthopedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,ventilating, water supply and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air or water.

13. Firearms; ammunition and projectiles; explosives; fireworks.

14. Precious metals and their alloys and goods in precious metals or coatedtherewith, not included in other classes; jewelry, precious stones; horological andchronometric instruments.

15. Musical instruments.

16. Paper, cardboard and goods made from these materials, not included in otherclasses; printed matter; bookbinding material; photographs; stationery;adhesives for stationery or household purposes; artists’ materials; paint brushes;typewriters and office requisites (except furniture); instructional and teachingmaterial (except apparatus); plastic materials for packaging (not included inother classes); printers’ type; printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from thesematerials and not included in other classes; plastics in extruded form for use inmanufacture; packing, stopping and insulating materials; flexible pipes, not ofmetal.

18. Leather and imitations of leather, and goods made of these materials and notincluded in other classes; animal skins, hides; trunks and travelling bags;umbrellas, parasols and walking sticks; whips, harness and saddlery.

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19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt,pitch and bitumen; non-metallic transportable buildings; monuments, not ofmetal.

20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood,cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

21. Household or kitchen utensils and containers (not of precious metal or coatedtherewith); combs and sponges; brushes (except paint brushes); brush-makingmaterials; articles for cleaning purposes; steelwool; unworked or semi-workedglass (except glass used in building); glassware, porcelain and earthenware notincluded in other classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (notincluded in other classes); padding and stuffing materials (except of rubber orplastics); raw fibrous textile materials.

23. Yarns and threads, for textile use.

24. Textiles and textile goods, not included in other classes; bed and table covers.

25. Clothing, footwear, headgear.

26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins andneedles; artificial flowers.

27. Carpets, rugs, mats and matting, linoleum and other materials for coveringexisting floors; wall hangings (non-textile).

28. Games and playthings; gymnastic and sporting articles not included in otherclasses; decorations for Christmas trees.

29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruitsand vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oilsand fats.

30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour andpreparations made from cereals, bread, pastry and confectionery, ices; honey,treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments);spices; ice.

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31. Agricultural, horticultural and forestry products and grains not included in otherclasses; live animals; fresh fruits and vegetables; seeds, natural plants andflowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinksand fruit juices; syrups and other preparations for making beverages.

33. Alcoholic beverages (except beers).

34. Tobacco; smokers’ articles; matches.

Services

35. Advertising; business management; business administration; office functions.36. Insurance; financial affairs; monetary affairs; real estate affairs.37. Building construction; repair; installation services.38. Telecommunications.39. Transport; packaging and storage of goods; travel arrangement.40. Treatment of materials.41. Education; providing of training; entertainment; sporting and cultural activities.42. Scientific and technological services and research and design relating thereto;

industrial analysis and research services; design and development of computerhardware and software; legal services.

43. Services for providing food and drink; temporary accommodation.44. Medical services; veterinary services; hygienic and beauty care for human

beings or animals; agriculture, horticulture and forestry services.45. Personal and social services rendered by others to meet the needs of

individuals; security services for the protection of property and individuals.

In January 2006, 73 states were party to the Nice Agreement. They have adoptedand apply the Nice Classification for the purposes of the registration of marks.

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Note:For up-to-date information, visit website at the following urls:www.wipo.int/classifications/fulltext/nice8/enmain.htm and www.wipo.int/madrid/en/contact.html

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Republic of Moldova (A&P)Romania (A&P)Russian Federation (A&P)San Marino (A)Serbia (A&P)Sierra Leone (A&P)Singapore (P)Slovakia (A&P)Slovenia (A&P)Spain (A&P)Sudan (A)Swaziland (A&P)Sweden (P)Switzerland (A&P)Syrian Arab Republic (A&P)

Tajikistan (A)The former Yugoslav Republic ofMacedonia (A&P)Turkey (P)Turkmenistan (P)Ukraine (A&P)United Kingdom (P)United States of America (P)Uzbekistan (A)Viet Nam (A)Zambia (P)

(A) indicates a party to the Agreement(P) indicates a party to the Protocol

* Protection may not be requested separatelyfor Belgium, Luxembourg or the Netherlands, butonly for all three countries as a whole (Benelux),subject to payment of a single complementary orindividual fee.

Note :For up-to-date information, visit website at the following url:www.wipo.int/madrid/en/members/

Department of Registrar General, Publication No. 001.“Customization and printing of this material was financed under the WIPO United StatesPatent and Trademark Office Funds in Trust”.

For more information contact theWorld Intellectual Property OrganizationAddress:34, chemin des ColombettesP.O. Box 18CH-1211 Geneva 20SwitzerlandTelephone:+41 22 338 91 11Fax:+41 22 733 54 28e-mail:wipo.mail@wipo.int

or its New York Coordination Office at:Address:2, United Nations PlazaSuite 2525New York, N.Y. 10017United States of AmericaTelephone:+1 212 963 6813Fax:+1 212 963 4801e-mail:wipo@un.orgVisit the WIPO website at:www.wipo.intand order from the WIPO Electronic Bookshop at:www.wipo.int/ebookshop

or its SMEs Division at:Address:34, chemin des ColombettesP.O. Box 18CH-1211 Geneva 20SwitzerlandFax:+41 22 338 87 60e-mail:sme@wipo.intWeb page:www.wipo.int/sme