INTRODUCTION

In spite of the standard trademark registration process that includes thorough examination of the trademark application before granting the trademark registration certificate, registering a trademark in the IP register is not absolute guarantee of trade mark validity in Rwanda. This is why today we look at the reasons why a trade mark might be removed from the register in Rwanda.

The reason why a trademark might be removed from the register, which is the focus of this Article, is if it is “revoked”. When a trademark is revoked or invalidated, it is removed from the register and the trademark right is terminated either entirely or in part.

Law n° 31/2009 of 26/10/2009 on the protection of intellectual property (Rwanda IP law) provides for the grounds for revocation. Article 149 provides that any interested person may request the Office of the Registrar General to remove a mark from the register, for a good or service for which it is registered, on the grounds that:

…following its registration and up to one month prior to submission of the request, the mark has not been used by the registration owner or by a licensee for an uninterrupted period of three years (3) or more.

Rwanda IP law states that an application for revocation may be made by any interested party, this means that the application can be initiated by anyone from the public to the Office of the Registrar General or to the commercial court. Normally, in practice and as the civil general rule states (he who alleges must prove). For trade mark revocation, it is the applicant’s burden to proof to the Office of the Registrar General or the courts of law that the trademark should be revoked. However, in some instances the trade mark owner may be requested prove the use of the registered trade mark. It must also be noted that while the language of the Rwanda IP law confers authority on the Office of the Registrar General to receive and decide on applications in relation to remove a trade mark from the register. The decision of the Registrar is appealable and can be challenged in the courts of law.

NON-USE

This is the main ground provided by the law on which a mark may be removed from the register. It is known that it is only by virtue of use that the registered trade mark come to communicate information to customers. Hence, the better view and understanding is that if a registered trade mark is not put to use within a reasonable period after registration, there is no good reason from preventing another business proprietor from adopting the trade mark. Therefore, the good reason why the law framers of Rwanda’s IP law included this provision of removing unused trade marks from the register, is that when such trademarks are removed from the register, this will enable other interested business proprietors to safely register similar, as well as identical, marks, if removed from the registered because of non-use. This is impossible if the trademarks are non-used and not removed from the register of trade marks.

Additionally, when observed in depth. Removal of trade marks from the register on ground of non-use also deters opportunistic stockpiling of good marks. E.g. Many people will take the advantage of developing economies like Rwanda, and register good trade marks for the sole purpose of obstructing other people from registering and owning the same or similar marks in Rwanda jurisdiction, and/or targeting to request for compensation in order to transfer ownership of the trade marks.

What is the relevant period of non-use of a trademark in Rwanda?

As indicted, Rwanda IP law under article 149 provides that the trademark may bey removed from the register on the basis that:

… following its registration and up to one month prior to submission of the request, the mark has not been used by the registration owner or by a licensee for an uninterrupted period of three years (3) or more.

In order for a trade mark to be removed from the register under Rwanda IP law – article 149, it is necessary to prove that, in the three-year and one-month period after registration, the trade mark has not been put to genuine use. This period granted by the law enables the trade mark owner to arrange him or herself to use the registered mark. In some developed jurisdiction like the UK, courts have ruled that an application to remove a trade mark from the register because of non-use, is in inadmissible, if filed before the lapse of this grace period (e.g. 3 years in Rwanda) granted to an owner of a trademark to arrange and use the registered trade mark.

The Rwanda IP law is also silent on the situation when the trade mark owner uses the trademark for some time and thereafter suspends the use of the trademark. In other jurisdictions like the UK, the law enshrines that a trademark may also be removed from the register where ‘use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use’. This notion can also be argued by any interested person in Rwanda, that a trademark owner suspended the use of his/her trademark for 3 years without proper reasons. However, the IP Law under article 149 it provides that the trademark shall not, however, be removed if it is proved that particular circumstances have opposed its use and that there was no intention not to use it or to abandon it for the goods or services in question.

In practice, a trademark will not be removed from the register on the basis of non-use if the use is commenced or resumed after the expiry of the three-year period and before the application to remove the trademark from the register is made.

GENERIC MARKS

Another reason to remove a trade mark from the register is when it becomes generic. What does this mean? This means a mark might be removed from the register on the ground that as a result of using of the trademark, it has become the common name in the trade for a product or service for which it is registered. The rationale with such possibility is that where a trade mark becomes generic, it loses its capacity to distinguish one trader’s goods or services from those of another, yet this is the main purpose of having and registering trademarks.

MISLEADING USES

This is another reason that a trademark might be removed from the register. Under Rwanda IP law especially Article 137: it is stated that:

…a mark is misleading if it is likely to mislead the public or those in commercial circles, particular as regards the geographical origin, nature or characteristics of the products or services under consideration.

The mark to be removed from the register, it must be proved by the applicant that the use of the mark misleads the public, particularly as to the nature, quality, or geographical origin of the goods or services. In practice, with such an application in Rwanda, the alleging party must adduce admissible evidence of the existence actual deceit of sufficiently serious risk that the consumer/public will be deceived. E.g. a trade mark can be challenged because it is misleading where the owner alters the geographical location of their business in such a way that the trade mark that was formerly suggestive of the origin becomes deceptive.

In conclusion it can be noted that a trademark in Rwanda might be removed from the register in Rwanda on the grounds discussed therein above. Hence, registering a trademark in the IP register is not absolute guarantee of trade mark validity in Rwanda. However, it must be noted that the trademark shall not be removed if it is proved that particular circumstances have opposed its use and that there was no intention not to use it or to abandon it for the goods or services in question.