The legal system regulating intellectual property (IP) in Mozambique after independence started with the setting up of the Departamento Central da Propriedade Industrial in 1995, and was later on replaced by the currentInstituto da Propriedade Industrial (IPI) in 2003. The first IP Code of Mozambique was approved by Decree 18/99 of 4 May 1999, and was replaced by the IP Code approved by Decree 04/2006 of 12 April 2006, which came into force on 12 June 2006. The latter IP Code is still in force in Mozambique, and this encompasses trademark licence agreements.
As one in the IP world may know, trademarks are not just static (as someone outside of the IP world may think); they are as dynamic as their IP holders, or owners. Most of the trademark owners or holders, mainly the famous ones, tend to leverage their IP rights by making them profitable, saving themselves time and at the same time expanding their trademark to places where it could not reach without entering into IP business schemes, especially in developing countries.
There are many ways of achieving the above, however one of the best for complying with relevant IP laws and at the same time still maintaining the ownership of the trademark right, therefore avoiding infringing IP rights, is through trademark licence agreements.
Trademark licensing will cover basically two or more players depending on the type of licence: the IP owner (licensor) and the one who wants to exploit the IP right (licensee). The trademark licence agreement provides the licensee with the right to exploit the licensor’s trademark through the payment of a royalty for its use.
In Mozambique, the IP Code in force sets out a provision on licensing in article 122, as follows:
- The proprietor of a registered mark may enter into licensing contracts for the use of the mark, without prejudice to his right to exercise effective control over the specifications, nature and quality of the relevant products or services.
- The proprietor may give the licensee the power to take action to defend the mark, without prejudice to the rights of the proprietor.
- The licensing contract shall be registered at the IPI in order for it to be effective against third parties.
First of all, in order to proceed with a trademark licence agreement, it is a sine qua non requirement that the trademark be registered with the trademark and patent office, the IPI. Second, this agreement does not have a special layout or form as long as it is in writing, the parties (i.e. licensor and licensee) are identified with both addresses, trademark schedule and the class(es) of goods or services, registration date including if possible the granting date, the term of the agreement, and it must be duly signed and notarised. Legalisation is not required, and pending trademarks cannot be part of the agreement.
Third, a special legal power of attorney duly signed and notarised (note that legalisation is not required) granting powers to the person who will file the request for recordal of the licence in Mozambique is also required. The appointed person must be enrolled as an “official agent of IP” within the jurisdiction to perform this act.
Fourth, as provided in article 122, the proprietor or owner of the trademark can have effective control over the specifications, nature and quality of the relevant goods or services.
Fifth, the licence agreement must be recorded with the IPI so that it is enforceable against third parties, as the recordal is advertised in the Official Gazette for opposition purposes, which lasts 60 days from the publication date.
Sixth, as to the meaning of point 2 of article 122 of the Mozambican IP Code, the holder of the trademark can empower the licensee to act so as to defend its trademark against any infringement act, however the proprietor’s right cannot be affected.
International trademarks, i.e. the ones filed at the World Intellectual Property Organisation (WIPO) designating Mozambique, are also subject to licence agreements, provided that these comply with the provisions of article 122, and this should be later communicated to the IPI so that it is advertised in the Mozambican Official Gazette, and the licensee may request the issuance of the registration certificate.
The Mozambican IP Code does not provide a term or deadline for instituting proceedings against any act of infringement in relation to the licensed trademark.
Exclusive or not?
Licences in Mozambique can be exclusive, whereby the proprietor of a trademark is not permitted to license the trademark to another party in the jurisdiction for use. There is also a non-exclusive licence, where the proprietor may use the trademark and grant the licence to various parties.
There are good examples of trademark licensing in Mozambique through franchising, namely in the field of consumer fast-food brands such as KFC, Mimmo’s, Debonairs and food and News Cafe.
Rui Loforte is a partner at Couto Graça & Associados (CGA) in Maputo, Mozambique, and the head of the firm’s intellectual property and labour groups of practice. He can be contacted on +258 21 496900 or by email at [email protected]