Industrial Property National Service
São Tomé, Sao Tome and Principe (ST)
African Regional Industrial Property Organization
Harare, Zimbabwe (ZW)
World Intellectual Property Organization
Geneva, Switzerland (CH)
New Industrial Property Law in Force
A new Industrial Property Code Decree-Law No. 23/2016 is in force since February 9, 2017 in São Tomé and Príncipe.
The new law makes an extensive revision of the IP law that existed for more than twelve years in Sao Tome e Principe (Law No. 4/2001, of 31 December and Decree 6/2004 of 30 June) and adopts many concepts and solutions that are enshrined in the current Portuguese law and in European law. Among the changes introduced by the new law we point out the following:
- Better organization and systematization of all matters covered by the law;
- Clarification of the rules on the right of priority and administrative procedures;
- The general term for oppositions or defenses is set at three months, extendable for another month;
- The new possibility of an administrative modification of decisions in the SENAPI, within three months after publication of a decision;
- A detailed definition of regimes for invalidation and revocation (in terms that follow closely the ones found in the Portuguese law)
- The new possibility of re-establishment of rights (restitutio in integrum);
- The new possibility of revalidation of expired rights due to lack of payment of fees;
- The adoption of new industrial property rights: utility models, supplementary protection certificates, topographies of semiconductor products, awards and logos;
- The adoption of criminal sanctions for the infringement of industrial property rights.
In the area of trademarks
- The recognition of three-dimensional marks and sound marks;
- The redefinition and clarification of the grounds for refusal of registrations, with a legal definition of the imitation concept;
- The special protection granted to well-known marks and marks with reputation in Sao Tomé and Príncipe or "in the World";
- The acceptance of declarations of consent;
- The registration duration remains in 10 years but counted from the date of grant;
- The requests for revocation for lack of use are to be filed at the IP Office (SENAPI);
- The adoption of explicit provisions recognizing and regulating regional marks registered under ARIPO as well as international trademarks designating Sao Tome e Príncipe under the Madrid Protocol.
For more information, please see here
Source: Simões, Garcia, Corte-Real & Associados, Portugal
Accession to Banjul Protocol
Sao Tome and Principe became the 19th member of the ARIPO on May 19, 2014. However, the implementation of the ARIPO international filing system requires an accession to the Harare and Banjul Protocol, and this was executed by Sao Tome and Principe in two stages:
1) Accession to the Harare Protocol on Patents and Designs
Sao Tome and Principe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of ARIPO on May 19, 2014. This brings the number of active ARIPO Member States which are parties to the Harare Protocol (on Patents and Designs) to 18.
Following the accession to the protocol, it has become possible for residents of the Sao Tome and Principe to file Patent and Industrial Design applications with ARIPO as a receiving Office.
2) Accession to the Banjul Protocol on Marks
On November 27, 2015, Sao Tome and Principe deposited an Instrument of Accession to the Banjul Protocol on Marks.
The Banjul Protocol entered into force, with respect to Sao Tome and Principe on February 27, 2016, and with effect from February 27, 2016, Sao Tome and Principe becomes eligible for designation as a Member States under the Banjul Protocol.
The accession of the Banjul Protocol by Sao Tome and Principe brings the number of Member States party to the Protocol to ten (10). Residents of Sao Tome and Principe will be able to file trademark applications with ARIPO as a receiving Office.
Source: www.jacksonettiandedu.com
Jun 10, 2014 (Newsletter Issue 9/14)
Accession to Harare Protocol/ARIPO
The Democratic Republic of Sào Tomé and Príncipe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of the African Intellectual Property Organization (ARIPO) on 19 May 2014. Therefore, the Democratic Republic of Sao Tome and Príncipe became a member of ARIPO with effect from 19 May 2014 and the Harare Protocol will enter into force with respect to the Democratic Republic of Sào Tomé and Príncipe on 19 August 2014 bringing the number of Member States of ARIPO to 19 and the number of states party to the Harare Protocol to 18.
Since the Democratic Republic of Sào Tomé and Príncipe is also a member of the Patent Cooperation Treaty (PCT), this means that any international application filed on or after 19 August 2014 will include the designation of the Democratic Republic of Sào Tomé and Príncipe for an ARIPO patent, as well as for a national patent.
Further, as from 19 August 2014 it will be possible for nationals and residents of the Democratic Republic of Sào Tomé and Príncipe to file international applications with ARIPO as a receiving Office.
Source: www.aripo.org; Brian Bacon Inc., South Africa and Honey & Blanckenberg, Zimbabwe
Legal basis is the Decree-Law No. 23/2016 in force since February 9, 2017.
São Tomé e Principe is a member of the:
- Convention establishing the World Intellectual Property Organization since May 12, 1998
- Paris Convention for the Protection of Industrial Property, Stockholm Act, since May 12, 1998
- Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol) since December 8, 2008
- The Hague Convention abolishing the requirement of legalization of public documents since September 13, 2008.
- Became a member of ARIPO on May 19, 2014, and the Harare Protocol entered into force with respect to the Democratic Republic of Sao Tome and Principe on August 19, 2014.
- The Banjul Protocol entered into force on February 27, 2016.
Trademark rights are acquired by registration. The marks that are well-known in São Tomé e Príncipe and the marks with reputation in São Tomé e Principe or in the world are protected, subject to their registration.
Nice classification, 10th edition
Article 164 of the Decree Law no. 23/2016 sets out:
"1. A trade mark may consist of a sign or set of signs that can be represented graphically, consisting, in particular, of words, including personal names, designs, letters, numbers, sounds, the shape of the product or its packaging, provided that such signs are capable of distinguishing the goods or services of a particular entity from the goods and services of another.
2 - The trademark may also consist of advertising phrases for the respective goods or services, provided that they are distinct in character, regardless of the protection conferred upon them by copyrights."
Three-dimensional marks and sound marks are recognised as well.
Not registrable according to Art. 165 are colours, save where they are combined with each other or with graphics, wording or other particular and distinctive elements.
The following trademark types are registrable: trademarks, service marks, collective marks.
The application is filed at the Industrial Property Institute (SENAPI) in São Tomé e Principe.
Multi-class applications are allowed, upon payment of additional class fees.
Although the São Tomé and Príncipe Industrial Property Law requires a notarized power of attorney to file a trademark application, the current practice of the local SENAPI does not require it.
The application process includes a formal examination and a substantive examination as to distinctiveness and availability with regard to prior registered marks.
The trademark is published in the Industrial Property Bulletin after the application is filed.
The opposition period is three months counted from publication of the trademark in the Industrial Property Bulletin.
Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
A trademark registration is valid for 10 years from date of registration.
The registration is renewable for periods of 10 years.
The official fee for filing a trademark application is EUR 86 in one class and EUR 22 for each additional class.
The registration fee of a trademark is EUR 45 in one class and EUR 16 for each additional class.
Official fees are not applicable for the publication of the trademark application.
Trademark Assignment is allowed with or witout the transfer of the undertaking.
Simões, Garcia, Corte-Real & Associados, Lisboa, Portugal
Industrial Property National Service (SENAPI)
Rua Viriato da Cruz
São Tomé
Tel +239 12 22803/21843
Fax +239 12 21843/22427
Mail secretaria@senapi-stp.net
www.senapi-stp.net
African Regional Industrial Property Organization (ARIPO)
11 Natal Road
Zimbawe
Tel +263 0242 794065
Fax +263 47 94 07 2
Mail mail@aripo.org
www.aripo.org
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int