Protecting your brand in Rwanda: Why and how.

Since a trademark is not protected by the mere fact of its creation, it is essential, in order to become its owner, to proceed to a trademark registration in Rwanda with RDB, Rwanda Development Board, and particularly with the Intellectual Property Division.

The trademark, a strategic intangible asset for any company, allows a Company, on the one hand, to become identifiable to consumers, and thus to acquire a public existence, and on the other hand, offers it the possibility to distinguish itself from other companies on the market. To achieve these objectives, it is important to protect it legally, by means of a trademark registration as established by the law in force.

What is a trademark?

The Law No. 31/2009 of 26/10/2009 on the protection of intellectual property defines in its article 5(15) the mark as a " visible sign enabling the products “product mark” or services “service mark” of a legal or natural person to be distinguished from those of others".

As a distinctive sign, the trademark must allow for the precise differentiation of the products or services of a company from those offered by its competitors. Thus, it confers to the company not only an identity of its own, but also a competitive advantage precisely because of this identity, which is unique and recognized within a given area.

Why protect your brand?

?As an intangible asset, the trademark has a value of particular importance for any Company. Therefore, it must be protected because the simple fact of existing (through its creation and exploitation) is not enough to protect it legally. It is necessary to register it with the competent RDB office as soon as it is created, in order to avoid any subsequent use and exploitation by third parties.

Registering a trademark allows to obtain a property right on it, and thus to benefit from a monopoly of exploitation and the legal possibility of taking action against third parties for infringement, in the event that the latter use a trademark identical or similar to the one that has been protected.

In other words, the registration of a trademark confers on its owner:

● A right of exploitation that allows him to protect his trademark and to claim ownership;

● A right to take legal action to defend the ownership and use of its trademark, and to prohibit third parties from exploiting it in the same sector of activity;

● A right to subsequently assign the mark to a third party, for example to create a license, and to earn revenue from it.

● The protection of a trademark also makes it possible to condemn acts of unfair competition, ...

How to proceed with a trademark registration?

In order to protect a trademark in Rwanda, it is mandatory to file a registration with the RDB Intellectual Property Organ which, among other attributions (12 in total) defined by the law, is in charge of:

- Issuing industrial property titles provided for in the law;

- Registering property titles, publishing, calculating and extending the time limits and regulating all related matters;

- To ensure the free and honest exercise of industrial and commercial activities through the prevention and repression of acts of counterfeiting and unfair competition in industrial and commercial matters;

- To arbitrate all disputes relating to intellectual property.

In order to register a trademark, the competent body responsible for intellectual property shall first ensure that the trademark for which protection is sought meets the criteria laid down by law. Indeed, in application of Article 133 of Law No. 31/2009 of 26/10/2009 on the protection of intellectual property, the following may constitute a sign that may be registered as a trademark:

1. names in all forms such as words, names of persons, letters, figures and acronyms;

2. figurative elements such as drawings, reliefs, shapes of goods or their packaging

3. colors or combinations of colors;

4. any combination of the above signs.

In addition to these criteria, a trademark shall be validly registered only if:

(1) it is distinctive;

(2) it is not imitative;

(3) it is not misleading;

(4) it is not descriptive.

A trademark is distinctive if it allows, by its nature, to distinguish the goods or services of an enterprise for which it is used from those of other enterprises. Thus, a mark is not distinctive if it describes in a generic or usual way the product or service concerned (for example: "Laundry" for a mark of washing powder, or "Tea" for a mark of tea or "Lemon" for a lemon juice,).

A mark is imitative if, it is:

● Either, identical, or confusingly similar, to a trademark or trade name well known in the territory of the Republic of Rwanda for identical or similar goods of another enterprise; or it constitutes a translation of that trademark or trade name ; or if it is well known and registered in the Republic of Rwanda for goods or services that are not identical or similar to those for which the registration of the mark is sought to the extent that the use of such mark for such goods or services indicates a connection between such goods or services and the owner of the registered mark and to the extent that such use is likely to be detrimental to the interests of the owner of the registered mark;

● Either, it is identical or similar to a mark belonging to another owner which is already registered, or has an earlier filing or priority date, for the same or very similar goods or services; or if it so resembles such a mark as to be likely to cause deception or confusion. There is a presumption of actual confusion if identical signs are used for the same goods or services.

Furthermore, the Law specifies that "a mark is deceptive" if it is likely to mislead the public or the trade, in particular as to the geographical origin, quality, nature or characteristics of the goods or services concerned. In other words, the deceptive character of a mark is deduced from the fact that it gives the impression to the consumer that the product has characteristics or qualities of which it is in reality devoid.

Finally, a trademark is descriptive if it includes, among its elements, the essential characteristics of the product or service in question.

Thus, words or expressions commonly used by consumers and technical words or expressions relating to the field to which the goods or services in question belong, are deemed not to have distinctive character.

It should be noted that, in accordance with the Law, the competent body cannot validly register a trademark if the application was made in bad faith or if the sign, once registered as a trademark, may be used for unfair competition.

As such, certain objects are definitively excluded from the scope of trademark registration; Article 140 of the Law states that, no one may adopt, in respect of goods or services, a trademark or service mark:

(1) which is contrary to public order or morality;

(2) which reproduces, imitates or contains among its elements coats of arms, flags or other emblems, the name, abbreviation or the official sign or hallmark of control and guarantee of a State or of an intergovernmental organization established by an international convention, except with the authorization of the competent authority of that State or of that organization.

Since the exclusive right to a trademark conferred by law is acquired through registration, how to proceed with the trademark registration?

The first step is to perform a prior art search. This search makes it possible to verify that the trademark you wish to register is not already used by third parties.

The next step is to fill out the trademark application form. This form must contain the trademark, as well as the classes of goods and/or services for which the trademark is registered.

Indeed, when filing a trademark application, the protection is aimed at certain sectors of activity. The choice of these sectors is made when filling in the trademark application form; there are 45 different classes, each corresponding to goods and/or services according to the Nice Classification. (Class Headings for Nice Classification, 11th edition, Version 2022 (for applications filed from 1 January 2022 to 31 December 2022).

It is possible to choose as many classes as desired, taking care to determine the precise nature of the goods and/or services.

In any event, once the application for registration of a trademark has been sent to the competent authority, it is subject to a pre-registration examination.

Thus, when the competent authority finds that the application for registration of the trademark meets the conditions set by the law and that the registration has not been opposed or that the registration of the trademark has been opposed and that the opposition has been decided in favor of the applicant:

(1) register the mark;

(2) publish a notice of the registration; and

(3) issue a certificate of registration to the applicant.

However, a registered trademark may be cancelled or removed .

Indeed, any interested person can ask the competent court to cancel the registration of a trademark when he proves that one or more of the conditions provided for by the law are not met.

Furthermore, a registered trademark may be cancelled for non-use at the initiative of any person who proves that, after the registration of a trademark for a product or service and up to one month before the filing of the application for cancellation, the trademark has not been used by the owner of the registration or by a licensee for an uninterrupted period of three years or more.

In what area is the trademark protected?

The protection resulting from the trademark registration is valid in Rwanda for a period of ten years from the date of filing of the application. Upon request, the registration of a trademark may be renewed indefinitely for consecutive periods of ten years each, subject to the payment by the owner of the prescribed renewal fee.

Thus, when the activity of a Company concerns only the Rwandan territory, the only registration made with the competent body is sufficient to protect the trademark on the whole territory during the period concerned.

?On the other hand, in case of a project to export goods or services abroad, it will be necessary to extend the protection of the trademark beyond the Rwandan borders.

In order to do so, and depending on the extension projects, one could file a trademark application:

Either at the regional level, through ARIPO, the African Regional Intellectual Property Organization which is an inter-governmental organization that facilitates cooperation among Member States (As of 31 December 2021, ARIPO was comprised of 21 Member States) in intellectual property matters;

Or even AIPO, the African Organization of Intellectual Property, handles trademark registrations within – mainly francophone – 17 Member States;

Or at the international level with the WIPO (World Intellectual Property Organization).