Nat Hovee / Shutterstock.com
The ‘new’ Namibian Industrial Property Act came into force on August 1 2018. It provides that trademark oppositions are to be heard by the Registrar of Trademarks and the invalidation of trademark registrations is to be heard by the Industrial Property Tribunal.
Until recently, little progress had been made in hearing either oppositions or invalidation matters, including those filed before the IPA came into force. When the act came into effect, there was a considerable number of outstanding oppositions and invalidations requiring adjudication and the list was ever growing.
Attorneys had advised clients to file oppositions in Namibia to preserve their rights and then to adopt a wait-and-see approach concerning their determination.
A lack of clarity
During June 2023, our firm was pleased to receive a hearing notice from the Registrar of Business and Intellectual Property concerning four oppositions filed in terms of the IPA during March 2022. However, both parties were unclear and uncertain about the procedures that would be followed by the Registrar.
The relevant regulations provide limited guidelines concerning the hearing of the oppositions and the filing of, inter alia, heads of arguments (a summary of the law and facts). In many other African countries, the registrars deal with procedural aspects by issuing directives concerning the filing of heads of argument (or written submissions) and other aspects.
The parties requested the Namibian Registrar to hold a pre-hearing meeting in terms of the IPA and to refer the four oppositions, which were closely related to parallel invalidation applications (which were in effect counterclaims in the oppositions) to the Tribunal for hearings in terms of section 221 of the IPA.
At the pre-hearing meeting with the Intellectual Property Services’ executive and registry staff held during July 2023, the executive, Ainna Kaundu, and her team were open to suggestions and recommendations concerning the filing of heads of argument, their timing and having virtual hearings. Her team requested input concerning the best practice in other countries from the attorneys representing the parties.
A welcome approach
The executive’s collaborative approach was refreshing and welcome. She carefully considered the positives and negatives of the suggestions made to her. She did not make a final decision concerning how the hearings would proceed but undertook to consider all the information provided. It would appear that an official directive regarding the hearing of oppositions will be published for comment in due course.
Ultimately, in the matter for which the pre-hearing meeting had been called, the executive, acting on behalf of the Registrar, agreed with the parties to refer those matters to the tribunal for hearing.
"The Tribunal’s decision to register the trademark application arguably goes too far: it should rather have ordered that the application be published for opposition purposes so that third parties would have an opportunity to oppose it."
The tribunal comprises three sitting judges, presently, Miller AJ, Masuku J and Prinsloo J, of the Namibian High Court. On April 14, 2023, the tribunal delivered its first judgment. This concerned a decision by the Registrar of Trademarks to reverse an earlier decision to accept and publish an application for the trademark ‘Enkehaus’. The Registrar reversed her decision in a letter and issued a notice to “delete” the application.
On appeal to the tribunal, it held that the Registrar was functus officio when she issued her letter and that the IPA did not bestow any power on the Registrar, mero motu, to reverse or rectify her earlier decision to accept the trademark application.
Accordingly, the Registrar’s decision was set aside and she was ordered to accept and register the trademark ‘Enkehaus’.
The Tribunal’s decision to register the trademark application arguably goes too far: it should rather have ordered that the application be published for opposition purposes so that third parties would have an opportunity to oppose it.
However, it is a promising development that progress is being made in hearing long-outstanding oppositions and pending invalidation applications.
Alicia Kabini is a partner in the trademark enforcement department at Adams & Adams. She can be contacted at: firstname.lastname@example.org
Adams & Adams, Namibian Industrial Property Act, trademark oppositions, invalidation, oppositions