Intellectual property in Mauritius: a primer - International Law Office

Introduction
Substantive Law
Securing Protection - Registration
Seeking Relief - Procedural Law

Introduction

The framework for the protection of IP rights consists of five pieces of legislation:

• the Patent, Industrial Designs and Trademark Act 2002;
• the Protection Against Unfair Practice Act 2002;
• the Layout Designs (Topographies) of Integrated Circuits Act 2002;
• the Geographical Indications Act 2002; and
• the Copyright Act 1997.

Parliamentary debate on the introduction of the Patent, Industrial Designs and Trademark Act, the Protection Against Unfair Practice Act, the Layout Designs Act and the Geographical Indications Act reveals that they were introduced as part of Mauritius's international obligations as a signatory of the Agreement on Trade-Related Aspects of Intellectual Property Rights.

These pieces of legislation were introduced to ensure that the laws on industrial property conformed with the international norms laid down by TRIPs.

The Patent, Industrial Designs and Trademark Act and the Protection Against Unfair Practice Act came into force on January 6 2003. However, neither the Layout Designs Act nor the Geographical Indications Act has yet entered into force, despite receiving the assent of the president on August 6 2002.

The Copyright Act came into force on September 20 1977, pursuant to Proclamation 13/1997. It reflects Mauritius's international committment to the World Intellectual Property Office to conform with the Paris Convention for the Protection of Industrial Property 1883.

Legislation on industrial property in Mauritius is undergoing review. The government's ambition is to enhance a legal environment that keeps abreast with international, constantly evolving trends, thus making Mauritius a platform with a sound legal framework to protect the IP rights of internationally well-known brands.

Substantive Law

Types of IP right protected
The IP laws protect copyright, patents, industrial designs, marks (ie, trademarks, trade names, service marks and collective marks), layout designs of integrated circuits and geographical indications.

Copyright Act
'Copyright' is defined as "an economic right subsisting in a work" (Section 2). It is transferable as moveable property and grants an exclusive right to the copyright owner in relation to well-defined activities (Sections 9 and 4).

The Copyright Act protects 'work', which it defines as "artistic, literary or scientific work, or a derivative work which is protected in accordance with Section 3". It sets out an exhaustive list of items that fall within the scope of 'artistic, literary or scientific work'.

Mauritius's obligations pursuant to the Paris Convention are expressly provided for by the Copyright Act, which states that the ambit of its protection extends to "a work whose author is a citizen of, or has his habitual residence in, Mauritius or another country party to the Berne Convention" (ie, Section 31(1) of the Convention for the Protection of Literary and Artistic Works).

The Copyright Act was amended in 1999 and 2000. However, to date it has not captured the system of registration that prevails under the Patent, Industrial Designs and Trademark Act. It was intended that "the protection of an author's work" would not "[be subject to any formality" (Section 3(3)).

Instead, it has created a statutory presumption that is applied during proceedings founded on the Copyright Act.

Patent, Industrial Designs and Trademark Act
The Patent, Industrial Designs and Trademark Act protects patents, industrial designs and marks (ie, trademarks, trade names, service marks and collective marks). The exclusive right to patents, industrial designs and marks is achieved by registration with the controller of the Industrial Property Office.

The Patent, Industrial Designs and Trademark Act defines a 'patent' as "the title granted to protect an invention", which in turn is defined as "an idea of an inventor which provides the solution to a specific problem in the field of technology" (Section 11(1)).

The act defines the phrase 'industrial design' as:

"any composition of lines or colours or any three-dimensional form, or any material, whether or not associated with lines or colours... provided that such composition, form or material – (a) gives a special appearance to a product of industry or handicraft, (b) can serve as a pattern for a product of industry or handicraft; and (c) appeals to and judged by the eye." (Section 27(1))

The act sets out an exhaustive definition for marks, collective marks and trade names. The common factor is that they must be capable of distinguishing the goods or services of one enterprise from another (Section 35). It also sets out factors that disqualify an application to register a mark, collective mark or trade name (Sections 36(2), (3) and (4)).

Layout Designs Act
The Layout Designs Act protects integrated circuits and layout designs.

A 'layout design' is defined as being:

"synonymous with topography and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and some or all of the inter-connections of an integrated circuit, or such a threedimensional disposition prepared for an integrated circuit intended for manufacture."

An 'integrated circuit' is defined as:

"a product, in its final form or an intermediate form in which the elements, at least one of which is an active element, and some or all of the interconnections of which are integrally formed on a piece of material and which is intended to perform an electronic function." (Section 2)

Geographical Indications Act
The Geographical Indications Act protects 'geographical indications', which it defines as:

"an indication which identifies a product as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the product is essentially attributable to its geographical origin." (Section 2)

Protection Against Unfair Practice Act
As an enabling piece of legislation, this act creates the offence of 'unfair practice'. As regards the scope of its protection, it states that "any of the industrial property enactments" falls within its purview (Section 3).

The Protection Against Unfair Practice Act does not define the phrase 'industrial property enactment'. However, a review of its definition of 'unfair practice' reveals that it captures the Patent, Industrial Designs and Trademark Act, the Layout Designs Act and the Geographical Indications Act.

The Protection Against Unfair Practice Act defines the phrase 'unfair practice' as an act that is committed during the course of an industrial or commercial practice and that is contrary to "honest commercial practice". The act has gone a step further in providing particulars of unfair practice in relation to specific pieces of legislation, such as the Patent, Industrial Designs and Trademark Act, the Layout Designs and the Geographical Indications Act. Thus, 'unfair practice' also means: (i) the 'exploitation' (as defined by the act) by any person that is not the owner of a registered patent or a registered industrial design without the agreement of the registered owner; and (ii) the use of a registered mark by a person other than the registered owner without the agreement of the registered owner.

The act does not define the phrase 'honest commercial practice'.

However, it has outlined the activities that fall within the ambit of 'contrary to honest commercial practice'. These include:

• breach of contract;
• breach of confidence;
• inducement to breach;
• the "acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know that any such practice was involved in the acquisition";
• the creation of confusion with respect to another's enterprise or activities in the course of an industrial or commercial activity;
• damage to another's goodwill or reputation in the course of an industrial or commercial activity;
• the misleading of the public in the course of an industrial or commercial activity;
• the discrediting of another's enterprise or activities in the course of industrial or commercial activities; and
• unfair competition in respect of secret information in the course of industrial or commercial activities.

Securing Protection - Registration

Copyright Act
Unlike the Patent, Industrial Designs and Trademark Act, the Copyright Act has established no mechanism for the registration of copyright, as it was intended that the protection of copyright be subject to no formality (Section 3(3)).

Instead, the Copyright Act has created statutory presumptions that are applied during legal proceedings - namely, that:

• the plaintiff is the owner of the copyright in dispute;
• copyright exists in the work to which it relates; and
• the person whose name is indicated on an audiovisual work in the usual manner as producer is the producer of the work (Section 42(a)(i)(ii)(iii)).

However, these presumptions cease to exist once the defendant causes ownership of the copyright to become a live issue during legal proceedings.

The duration of the protection of copyright is the lifetime of the author and a further 50 years after his or her death. Where copyright is jointly owned, the duration of the protection is the lifetime of the last surviving author and 50 years after his or her death (Section 12(1)(2)).

Patent, Industrial Designs and Trademark Act
Patents
In order to gain exclusive rights to a patent, an application lodged with the controller should include:

• an application form in English and in the form set out in the Second, Ninth or Fourteenth Schedules to the Patent, Industrial Designs and Trademark Act Regulations 2004;
• documents in support of the application, and English translations where the supporting documents are in a foreign language;
• an original power of attorney tha is registered with the registrar general of Mauritius, where the applicant appoints an approved agent to submit its application; and
• the relevant fee set out in the First Schedule (Section 10 of the Patent, Industrial Designs and Trademark Act Regulations).

Upon receipt of an application to register a patent, the controller must earmark a filing date for the application (Section 18(1)). Further, the controller must examine whether the application meets the above requirements and whether information on the right of priority and foreign application and patents has been provided (Section 19(1)). The Patent, Industrial Designs and Trademark Act does not oblige the controller to invite opposition. The controller must grant a patent where he or she is satisfied that the requirements of the act have been fulfilled within two years of examining the application (Sections 6 and 20(1)).

Where the controller determines that the application does not meet the requirements of the act, he or she must reject the application and inform the applicant accordingly. The act does not grant the controller discretion to provide a conditional acceptance on the proviso that the applicant provides the missing elements of the application (Section 20(2)).

Once it has been registered, a patent is valid for 20 years from the filing date. The validity of a registered patent during this period is conditional upon the payment of an annual fee to the controller. The act expressly declares that failure to pay the annual registration fee means that "the patent application [has] been withdrawn and the patent shall lapse" (Section 22(3)).

Industrial designs
The exclusive right to an industrial design is acquired after registration with the controller.

Two conditions precedent exist for registration of an industrial design under the Patent, Industrial Designs and Trademark Act. First, the design must not be contrary to public order or morality (Section 18(4). Second, it must be new. Under the act, a design is new if it has not "been disclosed to the public, anywhere in the world, by publication in tangible form or by use or by any other way, prior to the filing date or, where applicable, the priority date of the application for registration" (Section 28(2)).

Under the act, an application to register an industrial design is made to the controller as follows:

• The form prescribed by the Ninth Schedule of the Patent, Industrial Designs and Trademark Act Regulations must be duly completed and signed by the applicant, or all applicants where it is a joint application.
• The application must be supported by four copies of the necessary drawings, photographs or other adequate graphic representation of the industrial design.
• The application must contain an indication of the article or articles which constitute the industrial design or in relation to which the industrial design is to be used.
• The application must be accompanied by a specimen of the article embodying the industrial design where the industrial design is two-dimensional and in the size specified.
• The fee specified in the First Schedule must be paid (Sections 34 and 35 of the Patent, Industrial Designs and Trademark Act Regulations).

Under the act, an applicant may insert a declaration claiming priority under the Paris Convention (Section 30(3)).

A registered industrial design is valid for an initial period of five years from the filing date of the application. Thereafter, it may be renewed for a maximum of three consecutive periods of five years. The continued registration of a registered industrial design is conditional on:

• the application for renewal being made six months before the expiry of the validity period;
• payment of the renewal fees; and
• compliance with any other conditions that may be prescribed under the act.

Trademarks, collective marks, service marks and trade names
The exclusive right to a mark is gained through registration with the controller.

Under the Patent, Industrial Designs and Trademark Act, an application to register a trademark, collective mark or trade name must be submitted to the controller together with:

• the prescribed fee;
• a reproduction of the trademark, collective mark or trade name; and
• the list of classes of product and service in respect of which the application is made, in conformity with international classification under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks 1957.

The act authorizes an applicant to claim priority under the Paris Convention.

A registered trademark, collective mark or trade name is valid for 10 years from the filing date of the application (Section 41(1)). Upon expiry, a registered owner may apply for renewal of the registration for consecutive periods of 10 years, provided that the renewal fee is paid and any conditions prescribed by the act are fulfiled (Section 41(2)).

Layout Designs Act
Two conditions precedent exist for registration of an integrated circuit and layout design. First, the layout design must be original within the meaning of the Layout Designs Act. Second, the layout design must not have been commercially exploited for more than two years anywhere in the world (Sections 3(1)(a)(b) and 4).

An application to register an integrated circuit and layout design must be lodged with the controller in the manner set out in Section 8.

Geographical Indications Act
The Geographical Indications Act has not yet come into force, even though the president granted his assent on August 8 2002. However, in order to provide a broad overview of the registration framework for industrial property, the requirements for registration are set out below.

Under the act, it is not mandatory that a geographical indication be registered in order to invoke the protection of the act (Section 4).

An application to register a geographical indication must be made to the controller and must include:

• the prescribed fee;
• the name, address and nationality of the person filing the application and the capacity in which the applicant is applying for registration;
• the geographical indication for which registration is sought;
• the geographical areas to which the geographical indication applies;
• the products for which the geographical indication applies; and
• the quality, reputation or other characteristic of the products for which the geographical indication is to be used (Sections 8 and 9(1)(2)).

Upon receipt of an application to register a geographical indication, the controller must examine whether the application meets the requirements of the act. The controller must publish the application in the prescribed manner where he or she is satisfied that the application complies with the requirements of the act (Section 10((2)).

Any interested person can oppose the application within the prescribed period and in the prescribed manner by way of notice, and must demonstrate that any one of the requirements of Sections 6, 8 and 9 of the Geographical Indications Act has not been satisfied (Section 10(3)). The applicant has one month in which to submit a counter-statement, stating the grounds on which the application for registration is based, failing which the application shall be deemed to have lapsed (Section 10(4)(5)). If the applicant sends a counter-statement within one month, the controller must hear the parties and thereafter determine whether the geographical indication can be registered (Section 10(6)).

Seeking Relief - Procedural Law

Copyright Act
As an enabling piece of legislation, the Copyright Act sets out the activities that amount to an offence under its ambit (Section 44). An offence under the act incurs both civil and criminal liability.

With regard to criminal liability, the penalty for a first conviction is a fine not exceeding MRs300,000 ($11,111) and imprisonment not exceeding two years. In the event of a second conviction, the fine is a maximum of MRs500,000 ($18,519) and imprisonment not exceeding eight years.

As regards civil liability, a copyright infringement action must be entered before the Supreme Court.

Action may be commenced by either the copyright owner or the 'exclusive licensee', as defined by the act (Section 41(1)). The Supreme Court has been given broad powers on remedies that may be awarded. Thus, the court may:

• award damages;
• grant an injunction;
• order the forfeit of any infringing copy and apparatus, article or thing used for the making of the infringing copy or otherwise; and
• "notwithstanding any other enactment... grant such remedies... as [it] thinks fit" (Section 41(2)).

Generally, and subject to specific provisions of the act, the protection that liability affords may not be invoked where a work is reproduced for personal purposes (Section 13)).

No similar mechanism of registration exists under the Copyright Act as under the Patent, Industrial Designs and Trademark Act in view of the legislature's intention that the protection of an author's work be subject to no formality (Section 3(3)).

However, the Copyright Act has established the following statutory presumptions that are applied during proceedings:

• Copyright subsists in the work to which the action relates;
• The plaintiff is the owner of the copyright in dispute; and
• The person whose name is indicated on an audiovisual work in the usual manner as producer is the producer of the work (Section 42(a)(i)(ii)(iii)).

Protection Against Unfair Practice Act
Unfair practice incurs both criminal and civil liability. As regards criminal liability, the penalty is a fine of MRs250,000 ($9,260) and imprisonment not exceeding five years (Section 11).

The Supreme Court has been vested with additional powers in legal proceedings on unfair practice. The court may grant an injunction, award damages or "grant any other remedy provided by the law" (Section 11).

The statutory presumptions that apply in unfair practice proceedings based on the act are that the rights subsist in the work to which the action relates and the plaintiff is the owner of the industrial property in dispute. However, these presumptions cease to apply where the defendant disputes the ownership of the industrial property in question. The statutory presumption ceases to exist once the defendant makes the ownership of the industrial property a live issue during proceedings (Section 11(3)).

Patent, Industrial Designs and Trademark Act
Patents
The act identifies actions which constitute infringement of a patent and declares that this incurs civil liability, entitling the patent owner to claim damages before the Supreme Court (Section 21(3)).

Unfair practice in relation to patents exists where a person exploits a patented invention without the agreement of the patent owner (Section 52).

Legal proceedings for unfair practice in relation to patents must brought in accordance with the act (ie, before the Supreme Court), which states that acts of unfair practice incur both criminal and civil liability (Section 52(2)).

Criminal liability incurs a fine of MRs250,000 ($9,259) and a maximum term of imprisonment of five years.

As regards civil liability, the Supreme Court has the power to grant an injunction, award damages or grant any other remedy provided for in law (Section 11). Further, the statutory presumptions created by the act that apply during legal proceedings for unfair practice are that the right subsists in the work to which the action relates and the plaintiff is the owner of the mark. However, the presumption ceases to apply where the defendant disputes ownership of the mark (Section 11(3)).

The act provides for relief in the form of appeal under Section 10 or an application for an order of invalidation under Section 25. Both forms of relief are applied for before the Industrial Property Tribunal, set up under the act (Section 10). Neither application entitles the appellant or applicant to damages. The Patent, Industrial Designs and Trademark Act Regulations set out the method of application (First and Third Schedules to the Patents, Industrial Designs and Trademarks (Tribunal Rules of Procedure) Regulations 2008 (Patent, Industrial Designs and Trademark Act Procedural Rules)).

The tribunal has jurisdiction to hear and determine an appeal from "any person who feels aggrieved by any decision taken by the Controller, other than a decision under section 4(1)(b)" of the act, provided that the appeal is lodged within 28 days of the issue of the decision (Sections 10(1)(a) and 10(2)). During an appeal the tribunal has the discretion to "take evidence on oath" (Section 10(4)(b)).

On application for an order of invalidation, the tribunal may entertain an application from any interested person. The act prescribes no deadline for lodging an application for an order of invalidation before the tribunal. Further, when considering an application for an order of invalidation of a patent, the tribunal must address whether the applicant has established that "the requirements of sections 11, 12 and 14 [of the act] have not been fulfilled or where the owner of the patent is not the inventor nor his successor in title" (Section 25(2)). The tribunal may not take evidence on oath when entertaining an application for an order of invalidation.

Industrial design
It is an offence under the act to infringe an industrial design (Section 32(4)). The term 'infringement' is defined as the "making, selling or [importing] articles bearing or embodying a design which is a copy, or substantially a copy, of the registered industrial design" without the agreement of the registered owner or owners of the industrial design (Section 32(2)). The scope of the definition extends to the performance of "an act which is likely to amount to infringement" (Section 32(2)).

Unfair practice in relation to an industrial design exists where a person exploits an industrial design without the agreement of the registered owner (Section 32(1)).

Unfair practice incurs both criminal and civil liability, and legal proceedings for unfair practice must be brought in the manner prescribed by the act (ie, before the Supreme Court). The penalty for criminal liability is a fine not exceeding MRs250,000 ($9,259) and imprisonment not exceeding five years (Section 51(2)). As regards civil liability, the act sets out no penalties, but rather states that "unfair practice may give rise to a claim in damages" (Section 52(1)).

In unfair practice actions brought under the terms of the act, the Supreme Court has broad powers to grant an injunction, award damages or grant any other remedy provided for in law (Section 11).

During legal proceedings for unfair practice related to an industrial design, the act creates the statutory presumptions that the right subsists in the industrial design in dispute and the plaintiff is the owner of the industrial design in dispute.

However, the presumption ceases to apply where the defendant disputes the ownership of the industrial design (Section 11(3)).

The Patent, Industrial Designs and Trademark Act has empowered the tribunal to entertain two specific applications: (i) an appeal against the decision of the controller of Industrial Property Office; and (ii) an application for an order of invalidation of a registered industrial design (Sections 10(1)(a) and 34(1)). These applications do not give rise to an award of damages to the appellant or applicant. While there is a period of 28 days in which to appeal the controller's decision, there is none as regards an application for an order of invalidation.

Trademarks, collective marks, service marks and trade names
The Patent, Industrial Designs and Trademark Act entitles the registered owner of a mark or collective mark to apply to the courts: (i) where there has been an infringement or where there is likely to be an infringement (Section 40(2)); and (ii) where a mark that is similar to the owner's registered mark is being used and it is likely that the use of the other mark will cause "confusion in the public" (Section 40(3)).

The act declares that the offence of unfair practice in relation to a mark is constituted where a person uses a registered mark without the agreement of the registered owner (Section 40(1)). Under the act, unfair practice incurs both criminal and civil liability (Section 51). As regards criminal liability, the penalty is a fine not exceeding MRs250,000 ($9,259) and a term of imprisonment not exceeding five years (Section 51(2)). As regards civil liability, the act states only that "unfair practice may give rise to a claim in damages" (Section 52(1)).

Under the Protection Against Unfair Practices Act, the Supreme Court has wide powers to grant an injunction, award damages and grant any other remedy provided for in law (Section 11).

During unfair practice proceedings, the Protection Against Unfair Practices Act creates the statutory presumptions that the right subsists in the mark in dispute and the plaintiff is the owner of the mark in dispute. However, that presumption ceases to apply where the defendant disputes ownership of the mark (Section 11(3)).

The Patent, Industrial Designs and Trademark Act authorizes any person to apply to the tribunal for an order to invalidate the registration of a mark or collective mark (Sections 42(1) and 44(4)). However, the tribunal is not empowered to award damages when granting an order of invalidation.

Layout Designs Act
Without the owner's permission, it is an offence under Section 15(1) of the act to: (i) "[reproduce], whether by incorporation in an integrated circuit or otherwise, the protected layout design in its entirety or any part thereof, except the act of reproducing any part that does not comply with the requirement of originality" (Section 4); and (ii) "[import, sell] or otherwise [distribute] for commercial purposes the protected layout design, an integrated circuit in which the protected layout design is incorporated, or an article incorporating such an integrated circuit in so far as it continues to contain an unlawfully reproduced layout-design" (Section 6(2)).

The act further sets out that an act of unfair practice incurs both criminal and civil liability. As regards criminal liability, the penalty is a fine of MRs 250,000 ($9, 259) and a term of imprisonment not exceeding five years. In relation to civil liability, unfair practice gives rise to an action for damages (Section 15(1)).

The procedure for lodging proceedings under the act are the same as under the Protection Against Unfair Practices Act (ie, before the Supreme Court).

The Supreme Court has wide powers to:

• grant an injunction to prevent an act of unfair practice;
• award damages;
• grant any remedy that it thinks fit; and
• order the seizure, forfeiture and destruction of layout designs, integrated circuits or articles used in connection with the offence (Sections 15(2) and 16).

The Protection Against Unfair Practices Act creates the statutory presumption that the right subsists in the layout design or integrated circuit in dispute and the plaintiff is the owner of the layout design or integrated circuit in dispute. However, the presumption ceases to apply where the defendant disputes ownership of the layout design or integrated circuit (Section 11(3)).

The Layout Designs Act declares that the tribunal has the jurisdiction to:

• hear appeals;
• entertain applications for orders of invalidation;
• issue a ruling on the interpretation of the act; and
• authorize applications to exploit a layout design or integrated circuit.

Geographical Indications Act
It is an offence of unfair practice to commit the acts referred to in Section 3. The act further declares that unfair practice incurs both criminal and civil liability (Sections 3(2) and 7). As regards criminal liability, the penalty is a fine of MRs250,000 and a term of imprisonment not exceeding five years. In relation to civil liability, unfair practice gives rise to an action for damages (Sections 3(2)(4)).

The act creates the statutory presumption that the geographical indication in dispute falls within the definition of a geographical indication set out in Section 2 (Section 4(2)).

Legal proceedings must be brought in accordance with the provisions of the Protection Against Unfair Practices Act (ie, before the Supreme Court) (Section 3(3)).

The Supreme Court has broad powers to:

• grant an injunction;
• award damages;
• grant any other remedy that it thinks fit; and
• "order the forfeiture of any article or thing that were used or gave rise to an act of unfair practice" (Sections 3(4) of the Geographical Indications Act and 52(3) of the Patent, Industrial Designs and Trademark Act).

The act creates the statutory presumption that the right subsists in the geographical design in dispute and the plaintiff is the owner of the geographical design in dispute. The presumption ceases to exist where the defendant disputes ownership of the geographical design (Section 11(3)).

The act sets out that the tribunal has the jurisdiction to:

• hear appeals;
• entertain applications for orders of invalidation;
• issue a ruling on the interpretation of the act; and
• authorize an application to exploit a geographical indication (Section 17).

The tribunal has the power to entertain applications for cancellation of a geographical indication and for rectification of the register of geographical designs, which is maintained by the controller.

The tribunal cannot award damages, as would be the case before the Supreme Court.

For further information on this topic please contact Malcolm Moller or Gilbert Noel at Appleby by telephone (+2 30 203 4300), fax (+2 30 210 8792) or email (mmoller@applebyglobal.com or gnoel@applebyglobal.com).