There are two regional commissions for the registration of trademarks, namely: APIRO and OAPI in the territory of the African continent. However, Ghana is not included in the lists of any of them, which means that the process of registration in the state is possible only according to the national procedure.
Who is Eligible to Register a Trademark in Ghana?
Anyone or entity can register a trademark in Ghana. This basically applies to any person or entity claiming to be the proprietor of a mark being used or proposed to be used who may apply for trademark registration in Ghana. Foreigners who intend to register a trademark in Ghana must be represented by a legal practitioner resident and practicing in Ghana. The law does not make any specific provision for foreigners.
What marks are registrable in Ghana?
The general rule is that any sign or combination of signs capable of distinguishing the goods or services of one undertaking from the goods or services of other undertakings may be registrable in Ghana. This includes words such as personal names, letters, numerals, and figurative elements. However, there are a number of exceptions. The following marks are not registerable in Ghana:
- Trade names
- marks contrary to public policy or morality
- Marks are likely to mislead the public or trade circles regarding the geographical origin, the nature, or the characteristics of the goods or services;
- Marks that are identical to or an imitation of state emblems, flags, etc.
- Marks conflicting with prior rights for the same goods or services or closely related goods or services or marks so resembling such marks as to be likely to deceive or cause confusion.
Applicable Fees
The official filing fee for trademarks per mark per class in Ghana is GHC $510.00. The breakdown is as follows:
- Search (trademark availability search) – US $110.00
- Application -$200.00
- Issuance of certificate – $200.00
Steps to Registering a Trademark in Ghana
Step 1 – Preliminary Search
The first step is to carry out a search. The search is important to ensure that no identical trademarks have been registered or are pending registration. A preliminary search, therefore, ensures that registration conflicts are identified at the front end and dealt with, thereby saving you unnecessary time and additional expenses. A preliminary search costs $110.00.
Step 2—Submission of the Application Form
Once a determination is made that there are no conflicts associated with the trademark, an application can then be submitted with the appropriate fees to the Trademark Registry as specified under the Trademark Act, Act 662. It is important to note that applicants whose principal place of business is located outside Ghana are required to apply through local counsel.
Step 3 – Preliminary review by the Registrar
After the application has been filed at the Trademark Registry, the Registrar will conduct a preliminary review to ensure that the right procedure was followed and all parts of the law have been complied with.
Step 4 – Publication of the Trademark in the Journal
The registrar will evaluate the application and determine whether the “mark” qualifies for registration. If a determination is made that the trademark meets the general qualifications for registration, the mark will be published in the Trademark Journal for potential opposition from third parties. When the registrar determines that the trademark is not qualified for registration, the registrar will notify the applicant or his lawyer and provide reasons for denying registration.
Step 5 – Register the trademark and receive the certificate of registration.
Suppose there are no third-party oppositions to registration and the registrar determines the trademark as qualified. In that case, it shall be duly registered by the Registrar, and the applicant will be issued an official registration certificate. The trademark registration is valid for 10 years from the filing date of the application for registration.
You may renew the registration for consecutive periods of ten years once the prescribed fees are paid. A grace period of six months is allowed for late payment of the renewable fee upon payment of the prescribed late fees. Non-use for 5 years following registration makes the registration vulnerable to cancellation. Invalidation of a trademark is by the High Court.
Frequently Asked Questions (FAQs)
What is the timeline for registration?
It takes about two years for trademarks to be registered in Ghana.
Priority
How are priority rights claimed?
Priority may be claimed in the Paris Convention for the Protection of Industrial Property, Stockholm Act of July 14, 1967.
Searches
Are trademark searches a requirement before filing? If so, what procedures and fees apply?
Trademark searches are not a requirement before filing. However, it is advisable to conduct an availability search for the trademark to be filed to avoid the risk of possible objections. The fee for trademark searches in Ghana is US$110.00. The search is conducted by sending a letter to the Registrar of trademarks requesting for the Registrar to perform a search on the brand in the proposed class of goods and services.
What factors does the Trademark Registry consider in its examination of the application?
The Trademark Registry examines both the formal and substantive requirements.
How are objections to trademark applications communicated by the Trademark Registry?
Any objections to the trademark are communicated by official letters.
What are the rules governing the opposition to trademark applications?
Oppositions against a trademark application may be filed by any interested party within two months from the date of advertisement of the application or within such extended period as shall be granted by the Registrar on request.
Protection
What is the term of protection for a trademark?
The term of protection for a trademark in Ghana is ten years.
Are trademarks renewable in Ghana?
The registration of a trademark may be renewed for consecutive periods of ten years upon payment of the fee prescribed for renewal. A grace period of six months is allowed for the late payment of the renewal fee upon payment of the prescribed surcharge.
What are the rights conferred by registration?
The registered owner may institute court action against any person who infringes a registered trademark by using it without permission. The rights extend to the use of a sign similar to the registered mark and use in relation to similar goods or services where confusion may arise in the public.
What penalties can be sanctioned against an infringer?
Both civil and criminal penalties.
What is the procedure for assigning a registered trademark?
You must file an assignment of a trademark or an application for trademark registration with the Registrar for recording to affect a third party.
What is the procedure for licensing a registered mark?
You must submit a license concerning the registration of a trademark or an application for registration to the Registrar, who shall record the license and publish a reference to it. License contracts shall not be valid against third parties until filed with the Registrar.
Are there any rules regarding the use of trademarks in Ghana?
Yes, a registered mark may be removed from the register on request to the registrar by any person interested, on the grounds that, up to one month before the date of the request, a continuous period of five years or longer has elapsed during which there was no use of the mark by the registered owner or a licensee.
Can trademark applications be rectified?
Rectification or correction of the register may be made upon request to the Registrar, and the Registrar may correct errors in any document filed or any entry made under the Act.
- What are the local enactments governing trademark registration in Ghana?
- Trade Marks Act, 2004 (Act 664), entry into force (Gazette Notification): February 6, 2004. (Implementing regulations are yet to be promulgated.)
- The Trademarks (Amendment) Act, 2014 (Act 876), entered into force on July 25, 2014.
- Trade Marks Regulations, 1970 (L.I. 667).