The trademark landscape in Ghana (Part 1): How a trademark registration can offer legal protection for your brand

A strong brand identity is an invaluable asset that can help a business to capture greater market share and churn huge profits. After all, many of us pay expensive prices for designer items not necessarily because of their quality but because of the brand of those products.

Considering the tremendous importance of a product or service’s brand identity, and the great resources that a business must invest to establish this identity, how can a business owner protect this asset? What happens if an unscrupulous party begins using your brand identifiers (i.e., logo, brand name, insignia, etc.), or identifiers that are confusingly similar to yours, to sell their own products?

This other party could capitalize on your brand identity by making sales to customers who, after developing a preference and loyalty to your products/services, would no longer be able to distinguish between your business’ products and those of the imposter.

In addition to compromising your customer base, this other party can compromise the very integrity of your brand if they offer inferior products/services that are confused to have originated from your business. How can a business protect its brand from these unfortunate eventualities? Here, obtaining a trademark registration may be the answer.

In this article, we will address the following:

1. What is a trademark and why should a business consider obtaining a trademark registration?

2. What are the criteria for registering a trademark? In other words, what can be trademarked and what cannot be trademarked?

3. What is the legal landscape like with regards to trademark registration in Ghana?

4. What is the process of obtaining a trademark in Ghana?

5. What are the costs involved in obtaining a trademark in Ghana?

What is a Trademark?

A trademark is a logo, symbol, insignia, word, phrase, or a combination of these elements that gives a unique identity to a product or service and distinguishes it from other products of its kind on the market. It is essentially how customers recognize a business’ goods or services and distinguish them from its competitors.

It also identifies a particular product/service originating from a particular source. For example, “Golden Tree” is a brand name used to identify chocolate products manufactured by Ghana’s Cocoa Processing Company.

A consumer can be reasonably sure that whenever they unwrap any bar of chocolate with the Golden Tree mark, they are getting a product originating from the Cocoa Processing Company and are eating the same chocolate product whose quality they have grown to trust and love.

Why should a business obtain a trademark registration?

Registering a trademark confers exclusive rights to the registrant of that trademark. Owning a trademark registration strengthens the brand identity of a particular good/service because it prevents others from using the same mark or a mark that is confusingly similar to the registered trademark, thus guarding against counterfeiting and fraud.

Seeing as trademark rights are enforceable in court, a business can bring any unauthorized use of their trademark to order and may even sue them for damages.

Furthermore, trademark registration adds to the value of a business’s assets. A well-established trademark brings massive commercial value to the trademark owner because of the strong presence such a trademark has in the marketplace.

As a product/service gains popularity with consumers and its trademark become synonymous with high quality, prestige, and luxury, this trademark appreciates in value and adds to the overall value of the business that owns it. When said business is being evaluated for an important transaction, such as a major investment, merger, or acquisition, the high value of its trademark factors into its value.

Additionally, having a well-protected trademark that allows a business to build a strong brand identity and customer base can translate to increased revenue because the business can license or assign the trademark to another party. That is, the trademark can be “rented” or “sold” to a party that is interested in using the mark for their own purposes.

What are the criteria for registering a trademark?

A registrable trademark is one that is inherently distinctive. That is, it must be unique. For a trademark to be considered distinctive, it can be fanciful, arbitrary, or suggestive but cannot be descriptive or generic.

1. Fanciful trademarks are invented words. They have meaning only in relation to the goods or services that they represent. Examples are Voltic for bottled water and Azar for paint products. These types of trademarks are registrable.

2. Arbitrary trademarks are actual words, but they do not have any connection to the goods or services they represent. An example is Apple for electronic devices. Although the word Apple itself is a generic word (more on generic trademarks shortly) that can not be trademarked for an apple juice product, it can be trademarked for electronic products because it has no association with those products. These types of trademarks are registrable.

3. Suggested trademarks are words that suggest some quality of the product or service but do not explicitly name that quality. An example is Jaguar for cars or Papaye for food. The Jaguar trademark suggests that the cars it represents are as strong as jaguars and the Papaye trademark suggests the good quality of the food it represents. These types of trademarks are registrable.

4. Descriptive trademarks are those that describe a characteristic, feature, or property of the product they represent. An example is a sugar product with the name “Sweetness.” This type of trademark is generally not registrable.

5. Generic trademarks are names that are the common words for the goods or services they represent. An example is using “Coffee Shop” for a Café or “Shoes” for a sneaker brand. These words must be made available for everybody’s use so no one can have exclusive rights to them. Consequently, generic words cannot be registered.

While meeting the aforementioned general criteria is necessary to make a trademark registrable, it is not sufficient. Other important criteria exist in Ghana to further avoid confusion in the commercial marketplace. According to the Trademarks Act 2004, Act 664, a trademark is not registrable in Ghana if:

1. it is a trading name. A trade name is a pseudonym used by a business that does not operate under their business name;

2. it can not distinguish the products of one business from those of another;

3. it is immoral or against the public order;

4. it could mislead people with regards to the characteristics of the product or its geographic origins;

5. it is or resembles a flag, emblem, name, initials, or official sign of a State or an intergovernmental organization unless authorized by that State or organization;

6. it is identical, confusingly similar, or is a translation of a well-known trademark in Ghana that produces identical or similar goods or services to those represented by the proposed trademark.

Even if the goods are not related, a proposed trademark can not be registered if there is a chance that a connection could be made between the products of the proposed trademark and those of the well-known trademark such that the owners of the well-known trademark may suffer damages.

A well-known trademark is one that is reputable and the general public commonly knows of. This type of trademark is typically protected regardless of whether they are registered or not;

7. it is identical or confusingly similar to a trademark of a different owner that has already been registered for goods or services that are the same or closely related to those of the proposed trademark and;

8. it is identical or confusingly similar to a trademark covering the same or related goods that are already pending and that has an earlier filing date than that of the proposed trademark for the same goods or services or closely related goods or services.

What is the legal landscape in Ghana with regards to trademark registrations?

Legislative Influences

The sets of laws that guide trademarks in Ghana are the Trademarks Act, 2004 (Act 664) and the Trademarks Regulations, 1970 (L.I. 667). Together, these bodies of legislation provide the basic framework for how trademarks are treated in Ghana.

In addition, Ghana is a member of two important international trademark organizations, The World Intellectual Property Organization (WIPO) and the African Regional Intellectual Property Organization (ARIPO).

The various agreements that Ghana has entered into through WIPO and ARIPO influence its trademark landscape by introducing provisions other than those defined by Act 664 and L.I. 667.

Ghana’s membership in WIPO obligates it to abide by a number of international trademark agreements. For example, the Paris Convention agreement mandates each WIPO member state to give the same protection to a trademark prosecuted in their state by a registrant from another member state as they would give to their own nationals.

It essentially prohibits a member state from discriminating between foreigners (from other member states) and nationals. The convention also allows for a trademark applicant from a member state to claim a priority filing date.

This means that a trademark applicant that has applied for a trademark in their country can apply for the same trademark in another WIPO member country within six months and can have that second application be treated as if it was applied for on the date of the first application.

This Priority Filing principle is important because it provides an exception to the general “first-come-first-serve” rule of trademark practice, where if two applicants apply for the same or similar marks, the first to file their application gets the registration.

Claiming a priority filing date on an application gives a foreign applicant priority over a domestic applicant who technically files an application before the foreign applicant in that domestic applicant’s country, but after the initial filing date of the foreign application in its country of origin.

Another important WIPO agreement that Ghana is subject to is the Madrid System, which comprises the Madrid Agreement and the Madrid Protocol. This system allows an applicant of a member state to make a single international application that protects a trademark in multiple WIPO member states.

Instead of filing individual applications in each country of interest and paying multiple fees, a trademark applicant from a WIPO member state that is signed on to the Madrid System can apply for a single international application and pay a single fee to obtain registrations in multiple countries.

Ghana’s membership in ARIPO makes it subject to the Harare Protocol. Like the Madrid System, this protocol allows an applicant from an ARIPO member state that is subject to the protocol to make a single application that can then be extended to the eighteen ARIPO member states that are also signed on to the protocol.

These WIPO and ARIPO agreements open up Ghana’s trademark terrain too foreign actors and also allow Ghanaians to seek trademark protection in foreign jurisdictions.

Classification of Goods and Services

In trademark practice, goods and services are organized into 45 “classes” – Classes 1 to 34 cover goods, and Classes 35 to 45 cover services. Every trademark application must specify the class within which the applied-for goods or services fall into.

It is absolutely crucial that a trademark application identifies the correct class for its goods or services because misclassification of goods/services will most likely cause an objection to being raised against the application. Further, it is important to note that trademark registration is not infinite in its powers.

Its protectionary scope is limited to the goods or services for which the application covers, and closely related goods or services. So, if a trademark is registered for clothing, another party can use and register the same mark for a restaurant since clothes are unrelated to restaurants and consumers are unlikely to assume that the people behind the clothing company are the same people behind the restaurant.

It is also important to note that Ghana is a single-class jurisdiction. This means that unlike in jurisdictions like the U.S. where one application can cover multiple classes, a trademark application in Ghana must contain only one class. If an applicant wants to register the same trademark for multiple classes, they must file separate applications for each class.

What is the process of obtaining a trademark in Ghana?

Trademark matters in Ghana are handled by the Ghana Intellectual Property Office (GHIPO). This Office is an organ of the Registrar-General’s Department (RGD) and is responsible for processing trademark applications. One should note that while trademark applications are processed at GHIPO, all submissions and payment of fees must be done at RGD (as of July 2021).

The entire process of obtaining a trademark typically takes 18 to 24 months. The process of obtaining a trademark application in Ghana is as follows:

1. Conduct a search – A trademark search reveals whether there are marks identical to the proposed trademark that has already been registered or are pending registration for the same or closely related goods/services. Although this stage is optional, we always advise clients to conduct a search on their desired trademark because the results of a search tell you whether there are already existing marks that may prevent you from obtaining your trademark.

To conduct a search, one must write a letter addressed to the Registrar-General requesting a search to be conducted. This letter must state the desired trademark, the list of goods or services that the trademark covers, and the class those goods/services fall into.

If the trademark is a logo, symbol, insignia, etc., an image of the trademark must be attached to the search letter. The letter must be submitted to the RGD and the prescribed fee of $110 must be paid. Typically, search results are ready in two or three weeks and must be picked up at GHIPO.

2. Prepare application form – A trademark application form, “Form TM — No. 2”, must be filled. This form requires an image of the mark, whether it is a wordmark, image mark, or combination of both, to be affixed to a designated part of the form. It requests the list of goods/services that the trademark seeks to cover and their class.

Remember, one application can only cover one class. The form also requests the name of the owner of the proposed trademark and their business address. Finally, the form must be signed and dated by the owner/applicant of the proposed trademark or their legal representative.

If the application is being made by a business entity (i.e. not an individual) or a legal representative, it has to be stamped with the seal of the entity or law practice. The application form must be accompanied by at least four representations of the trademark, exclusive of the representation affixed to the actual form.

Please note that an applicant based outside of Ghana must apply for a trademark through a domestic legal representative. In this case, an agent authorization form (Form TM — NO. 1) must accompany the application form. This authorization form grants the legal representative the power to take all necessary actions relating to the application on behalf of the applicant.

3. Submit application – Two copies of the application form must be presented at RGD and stamped. One copy is submitted as the official application form, along with a payment of $200, and the other is kept for the applicant’s personal records.

This stamped personal copy is very important because it must be presented to GHIPO in all correspondence concerning the application. Following successful submission, a letter is issued to the applicant acknowledging receipt of the application materials.

4. Examination of application – After submission of the application materials, the application goes through various stages of examination by the trademark office during which it is determined whether the application complies with all requirements (some of these requirements are discussed in the “what are the criteria for registering a trademark?” section above.)

If the application does not meet certain requirements, a GHIPO official may get in contact with the applicant to request that corrections are made.

5. Publication for opposition – If the application passes the examination, it is published in the Industrial Property Bulletin for a period of 2 months. At this time, any party with a claim that the proposed trademark should not be registered can object to the trademark.

6. Obtain Certificate of Registration – If there are no oppositions to the application, trademark registration is granted. To obtain a registration certificate, a letter must be written requesting it and a prescribed fee of $200 must be paid. The letter must state the application number, the class, and the name of the subject trademark.

Trademark registration is valid for 10 years from the filing date of the application but can be renewed after this period. If a trademark registration is not renewed, it loses its protective powers and the trademark becomes available to the public.

Summary of costs involved in obtaining a trademark in Ghana

The official fees involved in obtaining a trademark are as follows. Please note that although these fees are officially quoted in U.S. dollars, they can be paid in the Ghana cedi equivalent.

i.Trademark search – $110
ii.Trademark application filing fee – $200
iii.Certificate of Registration fee – $200

Conclusion

A trademark plays a critical role in the commercial space and is the foundation of a business’s brand identity. The strength or weakness of a product or service’s trademark has the power to impact the revenue of the entity behind that product or service.

Consequently, it is often wise for a business to consider obtaining a trademark registration for its products or services in order to protect its brand identity.

This is especially important when a brand starts to garner popularity in the marketplace as this may attract counterfeiters and fraudsters looking to capitalize on the brand.

By: Baaba Abaka-Yankson and Emmanuel Mate-Kole of M&O Law Consult
Baaba is a paralegal with the Corporate and Commercial practice group and Emmanuel is the Managing Partner and Head of the Real Estate practice group of M&O Law Consult.

Email: info@molawconsult.com or ematekole@molawconsult.com

Source: Ghana Web

hammad

hammad

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