Trademarks in Ghana

12 Jul Trademarks in Ghana

What is a Trademark?

The Trademarks Act, 2004 (ACT 664) defines a trademark as any sign or combination of signs capable of distinguishing the goods or services of one undertaking from the goods or services of other undertakings including words such as personal names, letters, numerals and figurative elements.  As such, anyone who registers their trademark will have the exclusive right to the use of the trademark.

What is the procedure for registering a trademark in Ghana?

An application for registration of a trademark must be made through the Trademark Registry of the Intellectual Property Office. A trademark registration begins with an optional trademark search at the Trademark Registry. The rationale behind this is to ascertain that no identical trademark has been registered or is pending registration in Ghana.

Applicants whose principal place of business is located outside the jurisdiction are required to apply for registration through a legal practitioner resident and practicing in Ghana.

What criteria must the trademark application meet?

Trademark applications must be in conformity with the following requirements:

• The sign or combination of signs the applicant seeks to register must be capable of distinguishing the goods or services of the undertaking of the Applicant from the goods or services of other undertakings.
• The application must be accompanied with a reproduction of the trademark and a list of the goods or services for which the registration of the trademark is requested using the International Classification.
• The proposed trademark is not:

1. a trade name;
2. contrary to public order or morality;

• misleading or has the potential to mislead the public or trade circles with particular reference to the geographical origin of the goods or services, their nature or characteristics;

1. identical to or be an imitation of or contain as an element, an armorial bearing, flag, emblem, name, abbreviation or initials of the name, official sign or hallmark adopted by a State, intergovernmental organisation or organisation created by an international convention unless authorised by the competent authority of that State or organisation;
2. identical to or confusingly similar to or constitute a translation of a trade mark or trade name which is well known in the country for identical or similar goods or services of another enterprise or to a trade mark of another owner already on the register.

In the event the trademark application meets the above criteria, what happens next?

If the application conforms with the above requirements, the Registrar will publish the trademark application in the Industrial Trade Marks Bulletin (Journal) for a period of two (2) months. Within this period, any person who has an interest in the trademark may file for a notice of opposition to the registration in a prescribed manner. If no opposition is filed, a trademark certificate is issued.

 When does the trademark registration take effect?

The trademark registration formally comes into effect when the certificate of registration is issued. However, the applicant enjoys protection of the trademark from the date of filing the application.

How long is a registered trademark valid for?

A registered trademark in Ghana is valid for 10 years from the date of the application and same can be renewed for further periods of ten (10) years. However, a registered trademark may be subject to cancellation if such trademark has not been used for a continuous period of five (5) years following the registration.

Can a trademark be assigned to a third party?

Yes, a trademark can be assigned to a third party. Anyone entitled by assignment or transmission of a trademark must register same at the Trademark Registry by producing the relevant documents evidencing the assignment or particulars of the assignment.

 Which International Treaties is Ghana a signatory of?

Ghana has signed the following international treaties in relation to trademarks:

• Paris Convention Paris Convention for the protection of Industrial Property 1883, Stockholm Act of July 14 1967;
• the Convention on establishing the World Intellectual Property Organization (WIPO) of July 14, 1967;
• the World Trade Organization – TRIPS Agreement; and
•  the Madrid Protocol.