Any company needs to ensure appropriate legal protection to its trademarks. A trademark is indeed a property of a great value for the business success of any company. Thus, managers, company legal advisors, any other person interested need to perfectly master the following points:
What is a trademark?
Article 2 of the Burundian law on the industrial property defines a trademark as any sign capable of being represented graphically and susceptible of distinguishing the products or services of a company from those of other competing companies.
The same article states that "a particular trademark may be constituted by words including personal names, designs, letters, colors or combinations of colors, numbers, or the shape of goods or their packaging, by holograms, sounds, smells and flavors. "
Then, one can say that a trademark is a sign capable of distinguishing the goods or services produced or provided by an enterprise from those of other undertakings. It can be words, letters, figures, designs, colors, images, shapes, logos, or the combinations of these elements. It can also be sound or smell.
Further, under Burundian law, advertising slogans, if they are not long enough to be protected by copyright, are protected as trademarks.
But there are trademarks that are registered for use by several people: these are collective marks and certification marks. The collective mark is any mark belonging to a community such as a cooperative, an association or an industrial federation of producers or traders and can be used by every single member of the community, solely or in association with its own and proper trademark.
And a certification mark is a registered trademark owned by certification entities. The latter allow companies to use the said trademark under license to demonstrate that their products comply with a given standard.
What is the rationale behind the protection of trademarks?
The protection of trademarks is fundamental. In fact, a trademark is the bridge that links the customers and the products or services of a company. When a mark is well chosen and is duly registered, it is sometimes what makes the strong emotional relationship that is developed between the consumers and the products or services of a company.
Similarly, it is indeed the trademark that builds the image and the reputation of a company. For this reason, a trademark is of an inestimable value in terms of advertising strategies. The consumers are attracted by a trademark since there are qualities that they are looking for, which qualities are attached to that particular trademark.
How to protect a trademark in Burundi?
The trademark protection is done by filing an application for registration to the Department of Industrial Property and Documentation of the Ministry of trade. But trademark protection is based on the principle of territoriality, which means that there is no international protection from a single application.
For international protection, there are two ways: the Madrid system and the Paris Convention. The Paris convention allows a trademark owner to benefit from a priority period of 12 months, but he will still need to file application for registration of the same trademark in each country where protection is sought. It should be noted that Burundi is a member of the Paris Convention.
For the Madrid system, there is a single application through the World Intellectual Property Organization (WIPO) which then forwards the request to the designated countries. This possibility is not yet open for Burundi because the country is not yet a member of the Madrid Arrangement and Protocol.
What are the requirements for a trademark to be registered?
For a trademark to be protected, it must first be distinctive. The first paragraph of the article 288 of the Burundian law on industrial property specifies that a trademark cannot be validly registered "when it does not enable to distinguish the goods or services of a company from those of other undertakings"
Thus, it is right to say that a trademark is distinctive when it allows consumers to identify products or services of one undertaking from those of others. Hence, the trademark is not distinctive, and therefore cannot be registered if the sign is generic, that is to say, if the product or service is usually designated as such (e.g Thé des Collines for tea), or if the sign directly describes the product, that is to say when referring to the qualities or characteristics of the product, such as the geographical origin, quantity, period of production, usage, intrinsic virtues, etc..).
Secondly, the trademark must be available, which means that it must not be likely to be confused with another existing registered trademark or a prior well known trademark even when this is not registered.
Finally, the trademark must not be contrary to public order or morality and it should not be likely to mislead consumers with regard to the qualities or the origin of goods or services.