The main legislation governing trademarks in Mauritius is the Industrial Property Act, 2019 (hereinafter referred to as the “Act”). The Act consolidates and updates the law on industrial property, including trademarks, patents, geographical indications and designs. The Act is administered by the Mauritius Industrial Property Office (IPO), which comes under the Ministry of Foreign Affairs, Regional Integration and International Trade.
In Mauritius, a trademark transfer can be effected in various ways, including assignment or sub-licensing. If a change of name or address is required, a document evidencing the change of name/address or an affidavit certifying the change is required.
Trademark Assignment
An assignment involves the transfer of all rights, interest, title and benefit (ownership) in a trademark from one party (the assignor) to another party (the assignee). An assignment can be full or partial, depending on whether all or part of the rights associated with the trademark are being transferred. In the case of trademarks, an assignment involves the transfer of ownership of the trademark from the original owner to another person or entity.
The requirements for trademark assignment include the following:
- Written Agreement: Under section 134(4) of the Act, for a change in ownership, the transfer must be in writing and notice of such change or transfer must be given to the Directors of the IPO in the prescribed form.
- Registration: The transfer must be registered with the IPO to be effective against third parties. The registration application should include:
- Copy of transfer agreement
- Details of the trademark being assigned
- Information about the transferor and transferee
- Consideration: The consideration (payment) for the transfer needs to be stated in the agreement.
Sublicense
A sublicense allows the trademark owner (licensor) to allow another party (licensee) to use the trademark under certain conditions. The reason behind a trademark license can be additional business revenue, a new distribution channel or market segment, or a strategic partnership and increased customer recognition and advertising. The licensor retains ownership of the trademark while granting the licensee the right to use the trademark or a brand extension.
The requirements for trademark sublicensing include the following:
- Sublicense Agreement: The terms and conditions of the sublicense must be documented in a written agreement.
- Registration: Although not mandatory, it is recommended to register the sub-license with the IPO to ensure enforceability against third parties.
- Quality Control: The licensor must control the quality of the goods or services provided under the licensed mark to prevent dilution or misuse.
Trademark assignment in Mauritius is a regulated process. Whether it is an assignment or a sublicense, the relevant provisions of Mauritius law must be followed to ensure trademark protection and enforceability. Compliance with these procedures will enable businesses to effectively manage their intellectual property assets and deal with the complexities of trademark assignments in Mauritius.