On 31^st July, 2024, Law n° 055/2024 of 20/06/2024 on the Protection of Intellectual Property (“the new IP Law”) was published, repealing the previous Law n° 31/2009 of 26/10/2009. The enactment of the new IP Law represents a significant advancement in Rwanda’s IP landscape as it streamlines the intellectual property framework in Rwanda.

The new IP Law came into force on the date of its publication in the Official Gazette of Rwanda, that is on 31^st July, 2024.

Below are some of the key features of the new IP Law:

TRADE MARKS

1. Formality Examination

Under the new IP Law, where the formality requirements have not been met, the Registry shall issue a formalities incomplete notice inviting the applicant to complete the missing elements within fourteen (14) days from the day of notification. If the applicant submits the required elements within this period, the date of receipt of these missing elements is considered as the filing date. However, should the applicant fail to submit the missing elements, the application is deemed as withdrawn. Previously, applicants were given seven (7) days to submit any incomplete information.

• The requirements of registering trade marks

The new IP Law provides several key requirements for registering trade marks, and offers clarifications aimed at ensuring that distinctive marks are registered. The requirements include:

1. The prohibition of registering trade marks filed in bad faith or as an act of unfair competition

The new IP Law stipulates that a trade mark cannot be registered if the application was made in bad faith or if the application is an act of unfair competition.

• Imitative mark

The new IP Law stipulates that an imitative mark cannot be registered. A trade mark is considered imitative if:

• It is identical or confusingly similar to a well-known mark or trade name in Rwanda for the same or related goods/services, or even if unrelated, if it causes a connection or potential harm to the well-known mark’s owner.
• It is identical to a previously registered mark or one with an earlier filing date for the same or similar goods/services, causing likely confusion.
• It is similar to a previously registered mark or one with an earlier filing date for the same or similar goods/services, resulting in likely confusion.

• Confusing mark

The new IP Law also provides that a confusing mark cannot be registered. A mark is considered confusing if it is likely to mislead consumers as regards the geographical origin, quality, nature, characteristics, manufacturing process and suitability for the use for which it is intended.

A mark is also confusing if it contains a misleading geographical indication and it has a name similar to a registered trade name used in the same business.

• Descriptive mark

Further, descriptive marks cannot be registered. The new IP Law stipulates that a mark is descriptive if it contains among its components, words or expressions which serve only to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other fundamental characteristics of goods or services. Further, a mark is considered as descriptive if it is in common use by consumers in relation to the goods or services in respect of which registration of the mark is applied for or is it is a common technical term used in the relevant field of the goods and services in respect of which registration of the mark is applied for.

• International Applications and Registrations

• Provisional Refusal:

The Registry is mandated to notify the applicant of a provisional refusal through the International Bureau within twelve (12) months. If the Registry fails to notify the International Bureau of their decision within twelve (12) months, the trade mark application is deemed accepted.

• Cancelled International Application:

The new IP Law includes provisions on the transformation of cancelled international applications. In the event that the international registration is cancelled at the request of the Office of origin, in respect of all or some of the goods and services listed in the registration, the applicant of the international registration may file an application for the registration of the same mark as a national application and shall enjoy the same priority, provided that;

1. such application is filed within three(3) months from the date on which the international registration was cancelled;
   1. the goods and services listed in the application are the same as those contained in the international registration;
   1. such application complies with the requirements of the filing trade mark applications as provided by the new IP Law.

• Effect of trade mark rights after the publication period

The new IP Law affirms that after an application is published and until the registration of a mark, the applicant is granted the same rights and privileges as if the mark were already registered unless the application is withdrawn following a successful opposition.

PATENTS

1. Amendment of Patent Applications

The new IP Law provides that where the Registry has not confirmed whether or not the application meets the requirements for the grant of a patent, the applicant may amend the application. However, an amendment of a patent application is not allowed if it discloses matters which extend beyond those disclosed in the initial application.

• Conversion of application for a patent into a provisional application

An applicant may, at any time prior to the examination of a patent application, request the Registry to convert a patent application into a provisional application. A provisional application allows an applicant to obtain an earlier filing date when the inventor needs more time to work out the details of the invention.

Where an application for a patent is accompanied by specification which is considered as final, the Registry may, upon request by the applicant and within the period of twelve (12) months of the initial filing, allow the final specification to be considered as a provisional specification and the application is not discontinued. 

• Processing of Regional or International Patent Applications

Under the new IP Law, the processing of a regional or an international patent application shall not commence until the expiration of the time limit for processing of an international application provided under the Patent Cooperation Treaty and Harare Protocol. However, applicants may request the Registry to process their patent applications without being bound by the time limit specified by international or regional conventions upon payment of a prescribed fee. This option allows an Applicant to bypass the standard waiting period set by international or regional conventions.

TRANSITIONAL PROVISIONS

The new IP Law stipulates that Orders provided under the repealed Law n° 31/2009 of 26/10/2009 on the protection of intellectual property, shall remain in force for up to six (6) months from 31^st July 2024, provided that they are not inconsistent with the new IP Law. This include the Ministerial Order N°24 of 17/03/2016 Determining Fees Payable for Registration Services of Intellectual Property and the Guidelines for Intellectual Property Registration which shall remain in force for a period of up to six (6) months from 31^st July, 2024.

The new IP Law may be accessed here.

For more information, contact us at info@cfllegal.com