INDUSTRIAL PROPERTY REGISTRATION IN THE GAMBIA
The Industrial Property (IP) Office is headed by the Registrar General under the Ministry of Justice. The Office is responsible for the administration of all national applications, applications received from the Africa Regional Intellectual Property Organization (ARIPO) as well as applications received from the World Intellectual Property Organization (WIPO).
Administration of all industrial property rights are carried out in accordance with the followings laws, agreements and protocols:
- Industrial Property Act 2007
- Industrial Property (Amendment) Act 2015
- Industrial Property Regulations 2010, and
- Industrial Property Regulations 2011
APPLICATIONS UNDER THE AFRICAN REGIONAL INTELLECTUAL PROPERTY ORGANIZATION (ARIPO)
- Lusaka Agreement
- Harare Protocol on Patent and Industrial Design
- Banjul Protocol on Marks
- Swakopmund Protocol on the protection of traditional knowledge and expression of folklore
- Arusha protocol for the protection of new varieties of plant
APPLICATIONS UNDER THE WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)
- Berne Convention
- Madrid Protocol
- Paris Convention
- Patent Cooperation Treaty
- Patent Law Treaty
- WIPO Convention
What is a patent?
Section 3 of the Industrial Property Act 2007 defines a patent as a "title granted to protect an invention". An invention is an idea of an inventor which permits in practice the solution to a specific problem in the field of technology, and it may be, or may relate to, a product or process.
Section 4 of the Act outlines the criterion that needs to be satisfied for an invention to qualify for a patent and they include the following:
- Novelty. An invention must be new for it to be granted patent protection.
- Inventive step. An invention must not be obvious to a person ordinarily skilled in the art.
- Industrial applicability. An invention must be used in any kind of industry.
A patent application shall be on form P1 and shall be filed with Registrar General and shall contain:
- Drawing; and
The application fee for a patent application is D5000 (national) or 400 USD (International). An applicant can also withdraw a patent application before it is granted. Form P2 shall be used in withdrawing the application for patent and it is free of charge.
After the patent is examined and the Registrar General considered that all the criteria have been met, he or she shall grant the invention patent protection and shall issue a certificate to that effect. In issuing the certificate, Form P6 shall be used. The Patent is valid for a period of 20 years from the date of filing.
What is Utility model?
A utility model is a protection granted to an invention that is similar to a patent. Utility model applications are filed with Registrar General and Form U1 shall be used in applying.
For an invention to be granted a utility model it must have the following criterion:
- Novelty (local); and
- Industrially applicable
Application for utility model shall be on Form U1 and shall be filed with Registrar General and shall contain:
- Drawing; and
The application fee for utility Model is D2500 and is valid for a period of Ten years from the date of filing.
What is Industrial Designs?
Industrial design is the ornamental or aesthetic of an article. For industrial design to be registered it must be:
- New (local novelty); and
- Not contrary to public order or morality.
Applications for industrial designs shall be filed with the Registrar General using Form D1. The application fee for industrial design is D3125 (Local) or 250 USD (International).
The Registrar General after examining the application shall issue certification of registration of industrial designs using Form D6. An applicant may withdraw the application for registration before protection is granted using Form D2. The term for the protection of industrial designs is Fifteen years.
What are Trademarks?
Trademarks are visible signs capable of distinguishing the goods or services of an enterprise.
A Trademark cannot be validly registered if it is:
a) Incapable of distinguishing the goods and services of one enterprise from those of other enterprises;
b) It is contrary to public order or morality;
c) If it is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;
d) If it is identical with, it is an imitation of, or contains an element, an armorial bearing, flag, and another emblem, a name or abbreviation or initials of the name of, or officials signs or hallmark adopted by, any State, inter-governmental organization or organization created by an international Convention, unless authorized by the competent authority of that State or organization;
e) If it is identical with or confusingly similar to or constitutes a translation of, a mark or trade name which is well known in The Gambia for identical or similar goods or services of another enterprise; or
f) If it is identical with a mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
Application for registration of marks shall be filed with Registrar General using Form M1 accompanied by payment of a fee for the sum of D2500 and every additional class D1250 (Local) or 200USD and every additional class 100USD (International).
Upon receipt of the application the following will be carried out:
- The application will be stamped and dated if all the formalities (form property completed and signed, evidence of payment, and other documents) are in order.
- Substantive examination will be carried. If this examination is successful applicant will be issued Acceptance Notice and will be required to pay the publication fee of D1250 (National) and 100 USD (International).
- The application will be published for opposition for a period of three month.
- If there is no opposition, a registration certificate using Form M8 will be issued to the applicant.
- The trademark protection will be valid for 10 years and then subject to renewal for another ten years. The trademark may be renewed in perpetuity.
An applicant may withdraw the application for registration of mark before it is registered using Form M2 free of charge. An applicant shall use Form M3 to request for correction of the application for registration of a mark and it is free of charge.
An applicant can renew his or her application using Form M9 and shall pay the sum of D3125 (local) or 250 USD (International). A certificate of renewal shall be issued using form M10 and it is free of charge.
Applicant can apply for recordal of change per registration using form G1 and pay the sum of D1875 (Local) or 150USD (International). Application for recordal of a license shall be made using Form G2 and paid the sum of D3750 (Local) or 300USD (International).
1. What is the Madrid System?
The Madrid System is a convenient and cost-effective solution for national or regional trademark holders to obtain and maintain protection of their brands in multiple markets simultaneously, by filing a single application for an international trademark registration. The World Intellectual Property Organization (WIPO), in Geneva, Switzerland, administers the Madrid System. The Gambia joined the Madrid System in December 2015.
2. What are the advantages of the Madrid System?
The Madrid System is:
You file one application for an international trademark registration in one language and pay one set of fees in one currency (Swiss francs), to register your trademark in multiple territories. You can then centrally manage your international trademark registration – expand or renounce protection, change ownership, renew your registrations, and more – online, directly through WIPO.
You can seek protection of your trademark in all or any of the Madrid System’s Members, representing over 80% of world trade.
You save time and money by filing one application for an international trademark registration, rather than a bundle of national or regional trademark applications. You do not need to pay for translations or hire a representative to file your application in each country.
3. How does the Madrid System work?
The international trademark registration process comprises three stages:
Stage 1 – File (Registrar General’s Department)
Before you can file an application for an international trademark registration, you must already have – or have applied for – a national trademark registration (known as a “basic mark”) with Registrar General’s Department. You can then use your “basic mark” to file an application for an international trademark registration – seeking protection of your mark in multiple territories simultaneously – through Registrar General’s Department. We will certify it and send it to WIPO.
Stage 2 – Formal examination (WIPO)
WIPO checks that your international trademark application complies with all formal requirements (contact details, quality of images, payment of fees, etc.).
Once approved, WIPO records your trademark in the International Register and publishes it in the WIPO Gazette of International Marks. WIPO will then send you a Certificate of Registration – acknowledgement of compliance with WIPO’s formal requirements – and notify the intellectual property (IP) Offices of all the Madrid System Members where you are seeking protection of their designation.
Stage 3 – Substantive examination (national and regional IP Offices)
The IP Office of each Madrid System Member where you are seeking protection will perform substantive examination of your trademark. Each Office must grant or refuse protection in their territory within a given time limit (12, or in some cases 18, months from the date on which WIPO notified them of their designation). They will send their decisions to WIPO who will notify you and update the International Register accordingly.
Find out more about filing international trademark applications.
4. Can I use the Madrid System?
If you are a national of – or have a domicile or business in – The Gambia, you can use the Madrid System.
Reminder! Before you can file an application for an international trademark registration, you must already have – or have applied for – a national trademark registration with the Registrar General’s Department.
5. What is eMadrid?
eMadrid is your digital gateway to international trademark protection. It provides you with centralized and secure self-service access to all the Madrid System’s online services and tools. You can use eMadrid to prepare your application for an international trademark registration, and later to monitor and manage your registration.
Tip! You need to create a WIPO Account to use the online services available under eMadrid.
6. How do I file an application for an international trademark registration?
You should use the “Application Assistant” under eMadrid to prepare your application for an international trademark registration.
Reminder! You need a WIPO Account to use the services available under eMadrid.
The Application Assistant records all information in an intuitive and linear manner. All the basic information required is imported directly from your “basic mark” (your national trademark application or registration), saving you time and effort and reducing the risk of irregularities.
How to use the Madrid Application Assistant
- Go to eMadrid and select ‘Prepare your application’;
- Enter ‘Gambia’ in the ‘Search your Office of origin’ box;
- Click on the blue button ‘Get started with the Madrid Application Assistant’;
- Enter your WIPO Account username and password;
- Click on ‘New application’;
- Select ‘GM - Gambia’ from the drop-down list of Offices; and
- Click on ‘Import basic application or registration’.
You need to check that all the information is correct, and where necessary adjust or add any missing details such as your email address, representative details, etc.
Important! Don’t forget to designate the countries/regions where you seek international protection of your trademark, and if necessary, modify the list of goods and services. The list of goods and services is imported from your national trademark application or registration. The scope of protection of your international trademark registration can be narrower, but not broader. If you want to obtain international protection in additional classes of goods and services, you will need first to file a new national application through The Registrar General’s Department!
The ‘Validation’ screen is a natural stopping point in which it is possible to download a copy of the IA request in PDF format or view it in HTML format.
Once your International Application request is complete, the applicant progresses to the ‘Payment’ screen. Here the user is redirected to WIPO’s centralized payment platform. The applicant can select one of the payment options displayed and progress through the subsequent payment steps.
Note: It is possible to make modification to any of the completed screens. For example, Designated Contracting Parties can be added or removed. Once the application has been paid and completed, any further modification will not be possible.
7. How much does an international trademark registration cost?
Fees include a handling charge paid to MOJ, and a separate set of fees payable to WIPO (in Swiss francs (CHF)), including:
- A basic fee
- Additional fees depending on where, and in how many classes of goods and services, you want to protect your mark:
- Standard fees include:
- A complementary fee: 100 CHF per designated Madrid System Member; and
- A supplementary fee: 100 CHF for each class of goods and services, in excess of three.
- An individual fee replaces the “complementary fee” in certain Madrid System Members. Find out more about individual fees.
Tip! You can use the Fee Calculator available under eMadrid to estimate the cost of filing an application, extending protection to other Madrid System Members, and renewing an international trademark registration!
For an overview of basic, complementary, and supplementary fees, refer to the Schedule of Fees. Find out more about Madrid System fees and payment methods.
Important! WIPO cannot record your international trademark registration unless you have paid all the necessary fees.
8. How long is an international trademark registration valid for?
An international trademark registration is valid for 10 years and is renewable indefinitely. You can renew it either when the 10-year term expires, or within the six-month grace period following its expiry.
Warning! Additional fees apply if you renew your registration during the grace period.
The simplest way to renew your international trademark registration is through eMadrid.
9. How can I find out more about the laws and practices of Madrid System Members?
The Madrid System Member Profiles available under eMadrid provide a wide range of information on the laws, practices, and procedures of all Madrid System Members.
10. How do I classify the goods and services in my international application?
When you prepare your application for an international trademark registration using the Madrid Application Assistant available under eMadrid, the list of goods and services covered by your national trademark application or registration will automatically be imported into your international application (refer to question 6 for more information on filing).
You can adjust the goods and services to be narrower in your international trademark application but not broader.
If you wish to broaden the list of goods and services covered by your international trademark registration, you must first submit a new national application through the Registrar General’s Department.
Tip! Using the Madrid Goods & Services Manager available under eMadrid, you can select from hundreds of thousands of terms to:
- build your list of goods and services; and
- check whether the IP Offices of the Madrid System Members where you seek protection will accept or reject a term, saving you time and money!
11. Can I manage my international trademark registration through eMadrid?
Yes! You can use eMadrid to:
- track the status of your international trademark application and registration;
- expand protection to other Madrid System Members;
- limit the list of goods and services;
- renounce protection;
- manage your representatives;
- change contact details;
- change ownership;
- fix an error in the International Register;
- renew your international registration;
- pay fees;
- submit forms;
- and more.
Find out more about managing international trademark registrations.
12. Why should I search for identical or similar trademarks before I file an application for an international trademark registration?
Searching for existing and pending trademarks in your target markets will help you to uncover trademarks that are similar or identical to yours, and therefore to make an informed decision about your international trademark application strategy.
Warning! If your trademark infringes on the rights of another person or company, you may not be able to register it.
You can use WIPO’s Global Brand Database to search through millions of records from multiple national and international databases.
13. How can I check the status of my international trademark application/registration?
You can use “Monitor your registration” under eMadrid to track the status of your international trademark application in real-time as it moves through WIPO’s examination process.
Once WIPO has registered your application, you can find out whether the Madrid System Members where you seek protection of your mark have granted or refused protection in your target markets using the “Designation Status.
If the status of protection is “Protection Granted”, you can directly download a PDF document showing a status summary. If you need something more official, you can quickly order a certified document!
14. How can I keep up to date with Madrid System news?
You can sign up to receive email alerts on all the latest updates and developments in the Madrid System.
Quick links to WIPO resources