In order for a trademark to be protected in Malawi, registration is not mandatory. In Malawi, the rights to a trademark are granted to the person or company that first uses the trademark. In order to claim rights to an unregistered trademark through use, such use should be substantial and longstanding.
However, in practice, it is highly advisable to register the trademark in order to prevent others from using it or claiming ownership of it. A registered trademark grants presumption of ownership, offering a large advantage to the holder in case future disputes should arise. In Malawi, local registration is done through the Department of the Registrar General Ministry of Justice and Constitutional Affairs.
Malawi is also a member of the African Regional Industrial Property Organization (ARIPO) and a party member to the Banjul Protocol. Therefore, one may also register a trademark for Malawi through ARIPO. Registration through ARIPO grants protection and recognition in the following ten (10) countries: Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Uganda, Tanzania (mainland) and Zimbabwe. For further details regarding our trademark services in ARIPO, please click here.
It is not necessary for a trademark to be in use in Malawi in order for it to register. However, prior use may be useful as it can help overcome an objection raised on the grounds of lack of distinctiveness, by proving that the trademark has acquired distinctiveness. Furthermore, registered trademarks may be subject to cancellation actions presented by third parties if they are not used for a period of five (5) consecutive years.
If you register a combined trademark (which includes both word elements and figurative elements) in Malawi, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. The probabilities of success for an opposition will vary in each case depending on the circumstances. The time frame to present opposition actions is two (2) months following the date on which the conflicting trademark is published in the local gazette.
A newly registered trademark in Malawi will be valid for seven (7) years, period that will start from the registration date. Trademarks may be subsequently renewed for periods of 14 years. There is no limit to how many times a trademark may be renewed. Trademarks must be renewed within six (6) months prior to the renewal date.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Malawi (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.