IP Act amended in Seychelles
The Republic of Seychelles has enacted a new Industrial Property Act (Act 7 of 2014), repealing previous legislation governing industrial property and has been in force since 1 March 2015. A copy of the new Act may be found here.
The provisions of the Act cover the following:
- utility models;
- industrial designs;
- layout designs of integrated circuits;
- trade marks, including collective marks, certification marks and geographical indications;
- unfair competition and undisclosed information; and
- enforcement of industrial property rights (both civil and criminal provisions).
The Act is designed to provide for the adequate protection and enforcement of industrial property rights, to encourage local inventive and innovative activities, stimulate transfer of foreign technology, promote foreign direct investment, create a competitive business environment, discourage unfair practices, enhance free and fair practices and to foster socio-economic development in the region.
Patents are granted for inventions that are new, involve an inventive step and are capable of industrial application. Regarding novelty, the Act provides for a 12-month grace period for disclosures made to the public in the case of acts committed by the Applicant (or their predecessor in title) or acts which constitute an abuse by a third party in relation to the applicant (or their predecessor in title).
A 12-month right of priority may be claimed on the basis of earlier national or regional patent applications in any state which is party to the Paris Convention or any member state of the World Trade Organisation. The Act also recognises national phase Patent Cooperation Treaty (PCT) applications.
Upon the grant of a patent, a patent shall confer on its owner the right to prevent third parties from exploiting the patented invention in the Seychelles. A patent shall be granted for a period of 20 years commencing from the filing date of the application for protection. To maintain the patent, an annual fee shall be paid in advance to the Registrar for each year, commencing one year after the filing date of the patent application. In the case of late payment of annual renewal fees, a 6-month grace period is provided for together with the payment of a surcharge. Failure to pay the renewal fees within these time periods will result in the lapse of the patent, and restoration is not possible.
The Act also provides for the grant of non-voluntary (compulsory) licenses.
The new industrial property Act now makes provision for registered design protection.
Industrial designs are protected under the Act if they are independently created and new. An industrial design shall be considered new if it has not been disclosed in tangible form to the public anywhere in the world prior to the filing date for registration. However, provision is made for a 6-month grace period prior to filing, during which the industrial design will still be considered new, despite disclosure in tangible form.
Functional designs and designs that are contrary to public order or morality are not protected under the Act.
The registration of an industrial design confers an exclusive right on the owner to prevent third parties, not having the owner’s consent, from making, selling, stocking for sale or importing articles bearing or embodying the design when such acts are undertaken for commercial purposes.
Registered industrial designs shall be valid for a period of 5 years from the date of filing the application for registration. This period may be extended for two further consecutive periods of 5 years upon payment of renewal fees. As is the case with patents, a grace period of 6-months is provided for the late payment of renewal fees, together with a surcharge.
The non-voluntary (compulsory) license provisions applicable to patents apply equally to industrial designs. Ordinary licenses have no effect against third parties until they are recorded at the Industrial Property Office.
The Act makes provision for ordinary trade marks, colour marks, 3D marks, geographical indications, collective marks and certification marks. Exclusive rights in trade marks are acquired by registration in accordance with the Act. The Act provides for a 6-month right of priority to be claimed from the first filing date of the mark in the foreign country.
The registration of the mark shall be valid for 10 years from the filing date of the application for registration. The registration of a mark may be renewed for consecutive periods of 7 years each upon payment of a renewal fee.
Registration of a trade mark grants the proprietor the exclusive right to prevent nay unauthorised person from using an identical or similar mark for goods or services that are identical or similar to the goods or services in respect of which the mark is registered. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
The owner of an unregistered mark that is well-known in the Seychelles has the exclusive right to prevent any unauthorised person from using any sign this is identical or similar to the unregistered well-known mark in relation to goods and services that are identical or similar to the goods and services in relation to which the unregistered well-known mark is used provided that such use is likely to confuse the public.
An interested person may apply to the court to order the removal of a mark from the register on the grounds that the mark has not been used by the owner for an uninterrupted period of at least 3 years.
The Act takes significant strides to update the Intellectual Property laws in the Seychelles. Brand owners operating in this region are welcome to contact us for further information.
By David Legge, Trademark Department