Trade Marks Act
- Commenced on 1 April 1958
- [This is the version of this document at 31 December 2014.]
- [Note: This version of the Act was revised and consolidated in the Fifth Revised Edition of the Laws of Malawi (L.R.O. 1/2018), by the Solicitor General and Secretary for Justice under the authority of the Revision of the Laws Act.]
1. Short titleThis Act may be cited as the Trade Marks Act.
Part I – Administration
3. Establishment of Trade Marks OfficeThere shall be established under the direction of the Minister an office to be called the Trade Marks Office.
4. SealThe seal of the Patent Office kept in terms of the Patents Act shall also be the seal of the Trade Marks Office, and impressions thereof made for the purposes of this Act shall be judicially noticed.
5. Appointment of officersThere shall be appointed—
6. Register of trade marks
Part II – Effect of registration and the action for infringement
7. No action for infringement of unregistered trade markNo person shall be entitled to institute any proceedings to prevent or to recover damages for the infringement of an unregistered trade mark, but nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
8. Registration to be in respect of particular goodsA trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision shall be final.
9. Right given by registration in Part A and infringement thereof
10. Right given by registration in Part B and infringement thereof
11. Infringement by breach of certain restrictions
12. Saving for vested rightsNothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it, in relation to goods, in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior—
13. Saving for use of name, address or description of goodsNo registration of a trade mark shall interfere with—
Part III – Registrability and validity of registration
14. Distinctiveness requisite for registration in Part A
15. Capability of distinguishing requisite for registration in Part B
16. Prohibition of registration of deceptive, etc., matterIt shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design.
17. Prohibition of registration of identical and resembling trade marks
18. Registration in Part A to be conclusive as to validity after seven years
19. Registration subject to disclaimerIf a trade mark—
20. Words used as name or description of an article or substance
21. Effect of limitation as, to colour and of absence thereofA trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the Registrar, or by the Tribunal in the event of an appeal from a decision of the Registrar, in deciding on the distinctive character of the trade mark.If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
Part IV – Procedure for, and duration of, registration
22. Application for registration
23. Opposition to registration and appeals
25. Duration and renewal of registration
26. Registration of parts of trade marks and of trade marks as a series
Part V – Assignment and transmission
27. Powers of and restrictions on, assignment and transmission
28. Certain trade marks to be associated so as to be assignable and transmissible as a whole only
29. Power of, registered proprietor to assign and give receiptsSubject to this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any other person, have power to assign the trade mark and to give effectual receipts for any consideration for an assignment thereof.
30. Registration of assignments and transmissions
Part VI – Use and non-use
31. Removal from register and imposition of limitation
32. Defensive registration of well-known trade marks
33. Registered users
34. Proposed use of trade mark by corporation to be constituted, etc
35. Use of one of associated or substantially identical trademarks equivalent to use of another
36. Use of trade mark for export tradeThe application in Malawi of a trade mark to goods to be exported from Malawi and any other act done in Malawi in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in Malawi, would constitute use of a trade mark therein shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or under any other law.
Part VII – Rectification and correction of the register
37. General power to rectify entries in register
38. Power to expunge or vary registration for breach of conditionOn application by any person aggrieved to the Tribunal or, at the option of the applicant and subject to section 64, to the Registrar or on application by the Registrar to the Tribunal, the Tribunal or the Registrar may make such order as the Tribunal or the Registrar may think fit for expunging or varying the registration of a trade mark on the ground of any contravention of or failure to observe a condition entered on the register in relation thereto.
39. Correction of register
40. Alteration of registered trade mark
41. Adaptation of entries in register to amended or substituted classification of goods
Part VIII – Certification trade marks
42. Certification trade marks
Part IX – Functions of Registrar in relation to certain evidence, documents and powers
43. Preliminary advice by Registrar as to distinctiveness
44. Hearing before exercise of Registrar's discretionWhere any discretionary or other power is given to the Registrar by this Act or the regulations, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.
45. Evidence of certain entries and documents
46. Requests for information as to trade markThe Registrar shall, on the request of any person and on payment of the prescribed fee, furnish copies of any documents which are open to public inspection and which are lodged at the Trade Marks Office or particulars from the register or furnish a certificate in respect thereof.
47. Power of Registrar to award costsIn all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable and to direct how and by what parties they are to be paid. Any costs awarded by the Registrar shall be taxed by a taxing officer of the Tribunal and payment thereof may be enforced in the same manner as if they were costs allowed by the Tribunal.
48. Proceedings before Registrar
49. Power of Registrar to fix time and place of sitting, etcThe Registrar may in any proceeding held before him decide the hours, times and places at which he will sit and he may adjourn any proceedings for such time and to such place as he may think fit.
50. Advertisements to be approved by RegistrarNo advertisement or notice, other than a notice issued under the authority of the Minister, shall be published by any person under this Act unless it is in the prescribed form and the Registrar has approved the contents of such advertisement or notice, and no advertisement or notice which has not been so approved shall have any force or effect for the purposes of this Act.
Part X – Appeals and legal proceedings
51. Patents Tribunal to hear appeals
52. Right of audienceIn any proceedings before the Tribunal under this Act, the parties to such proceedings may appear in person or be represented and appear by a legal practitioner, and in any case where the Tribunal deems fit, it may grant to the Registrar leave to intervene, and he may thereafter appear or be so represented.
53. RulesThe Minister may make rules for regulating generally the practice and procedure of the Tribunal and with respect to appeals or references to such Tribunal as to the time within which any requirement of the rules is to be complied with, as to the costs and expenses of and incidental to any proceedings in such Tribunal, as to the fees to be charged in respect of proceedings therein, as to the fees to be paid to assessors, and in particular may make rules providing for the summary determination of any appeal which appears to the Tribunal to be frivolous or vexatious or to be brought for the purpose of delay.
54. AssessorsThe Tribunal may appoint any person with special expert knowledge to act as an assessor in an advisory capacity in any case where it appears to such Tribunal that such knowledge is required for the proper determination of the case.
55. Time for appealsAppeals under this Part, whether from decisions of the Registrar, or orders or decisions of the Tribunal, shall be brought within three months after the date of the decision or order in question or within such further time as the Tribunal or High Court may allow upon application by the appellant concerned.
56. References to Tribunal by RegistrarWhen any matter to be decided by the Registrar under this Act appears to him to involve a point of law or to be of unusual importance or complexity, he may, after giving notice to the parties, refer such matter to the Tribunal for a decision and shall thereafter, in relation to such matter act in accordance with the decision of that Tribunal or any decision substituted therefor on appeal to the High Court.
57. Registration to be prima facie evidence of validityIn all legal proceedings relating to a registered trade mark (including applications under section 37) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
58. Certification of validityIn any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the High Court or Tribunal may certify to that effect, and if it so certifies, then, in any subsequent legal proceeding in which the validity of the registration comes into question, the proprietor of the trade mark, on obtaining a final order or judgment in his favour, shall have his full costs, charges and expenses as between solicitor and client or attorney and client, unless in the subsequent proceeding the High Court or Tribunal certifies that he ought not to have them.
59. Infringement or passing off action to be heard in High CourtAny action or legal proceeding relating to the infringement or passing off of a trade mark shall be brought in the High Court.
60. Trade usage, etc., to be consideredIn any action or proceeding relating to a trade mark or trade name, the Tribunal or the Registrar, as the case may be, shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons.
61. Registrar’s appearance in proceedings involving rectification
62. Tribunal’s power to review Registrar's decisionThe Tribunal, in dealing with any question of the rectification of the register (including all applications under section 37) shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made.
63. Discretion of Tribunal in appealsIn any appeal from a decision of the Registrar to the Tribunal, the Tribunal shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.
64. Procedure in cases of option to apply to Tribunal or RegistrarWhere under any of the foregoing provisions of this Act an applicant has an option to make an application either to the Tribunal or to the Registrar and such application is made to the Registrar, the Registrar may, at any stage of the proceedings, refer the application to the Tribunal or may, after hearing the parties, determine the question between them, subject to appeal to the Tribunal.
65. Security for costs and taxation of costs
66. Costs of RegistrarIn all proceedings before the Tribunal under this Act, the costs of the Registrar shall be in the discretion of the Tribunal, but the Registrar shall not be ordered to pay the costs of any other of the parties.
67. Appeals to High Court
Part XI – Offences and penalties
68. Falsification of entries in registerAny person who makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or who produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, shall be guilty of an offence.
69. Penalty for falsely representing a trade mark as registered
70. Deceiving or influencing the Registrar or an officer
71. Witness giving false evidenceAny person who, after having been sworn, wilfully gives false evidence before the Registrar or the Tribunal concerning the subject-matter of the proceeding in question, knowing such evidence to be false or not knowing or believing it to be true, shall be guilty of an offence.
72. PenaltiesSave where otherwise provided in this Act, any person who is guilty of an offence under this Act shall be liable to a fine of £500 and to imprisonment for three years.
Part XII – Miscellaneous
73. Convention arrangements
74. Change of form of trade connexion not to be deemed to cause deceptionThe use of a registered trade mark in relation to goods between which and the person using it any form of connexion in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been or is used in relation to goods between which and that person or a predecessor in title of his a different form of connexion in the course of trade subsisted or subsists.
75. Jointly owned trade marksWhere the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except—
76. Lodging and authentication of documents
77. Expenses of administrationAll moneys necessary for the purpose of this Act shall be paid out of moneys provided for the purpose by Parliament.
78. Provisions as to fees
79. Oaths and affirmationsAny person who is required under this Act to take any oath or swear to the truth of any affidavit may, in lieu thereof, make an affirmation or declaration in accordance with the law relating to affirmations or declarations.
80. Trade Marks Journal
81. Power to make regulations
Part XIII – Application
82. Application of ActSave as otherwise provided in this Part, this Act shall apply in respect of all trade marks, including trade marks registered before the date of commencement of this Act, and in respect of all applications for the registration of trade marks, including applications made before that date:Provided that—
Part XIV – Trade mark agents
83. Registration of trade mark agents
84. Removal of names from register of trade mark agents
85. Privileges of legal practitioners and patent agentsAny person entitled to practise as a legal practitioner and any patent agent may practise and describe himself as a trade mark agent and perform the functions set out in section 87 without being registered as a trade mark agent.
86. Entitlement to practise as a trade mark agent
87. Trade mark agents and their functions
88. Prohibition of certain acts by trade mark agents
History of this document
01 April 1958