How to register a trademark in Namibia

Namibia is conveniently located in South Africa, bordering major markets such as South Africa, Angola and Botswana. This gives Namibia easy access to regional and international markets. Walvis Bay Port is a deep-water natural seaport, capable of receiving large cargo ships, facilitating import and export. Namibia is famous for its abundant reserves of diamonds, uranium ore, copper, lead, zinc and tungsten. Mining contributes 13.5% of GDP and 50% of the country’s total exports. Namibia has a coastline of 1,500 km with rich seafood resources, especially sardines, cod and lobster. The fishing and seafood processing industry contributes significantly to the economy. Despite the dry climatic conditions, Namibia still has potential for agricultural development, especially cattle raising and viticulture. Agriculture accounts for 7.1% of GDP and provides employment for 14% of the population. In order to attract domestic and foreign investment, the Namibian government has issued many preferential policies to attract foreign investment, including corporate income tax exemption, value-added tax exemption and simplification of administrative procedures. Namibia is committed to ensuring a safe, stable and transparent investment environment for investors. Therefore, more and more businesses are expanding their business scope in Namibia, in order to be able to distinguish their brand from other competitors, businesses need to pay attention to trademark registration procedures in Namibia. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in Namibia through the article below.

Legal basis

• Law on Industrial Property, 2012 (Law No. 1 of 2012) (amended by Law No. 8 of 2016)

General overview of “trademarks” in Namibia

What is a trademark?

A trademark is a sign, symbol or business identity that helps businesses distinguish their goods or services from other businesses/entities. Trademarks may include images, labels, names, signatures, words, letters, numbers or any combination thereof, or packaging of goods. The validity period of the trademark is 10 years, which can be renewed every 10 years.

What are the benefits of trademark registration?

Trademark ownership ensures that the trademark owner has the exclusive right to use them to identify goods or services, or allow others to use them in exchange for fees. The term of protection may vary, but the trademark may be renewed indefinitely upon payment of the corresponding fees. Trademark ownership is enforced legally by the courts, which have the authority to prevent trademark infringement in most systems. Trademarks promote initiatives and businesses worldwide by giving ownership owners recognition and financial returns. Trademark ownership hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive marks to sell inferior or differentiated products or services. This system allows businesses and individuals with specialized skills to produce and bring goods and services to market in the most competitive conditions, thereby facilitating international trade.

What kind of trademarks can be registered?

A trademark can be one or a combination of multiple words, letters, and numbers. These may include drawings, symbols or three-dimensional signs, such as the shape and packaging of goods; as long as they are used to determine the commercial origin of goods or services. In addition to determining the commercial origin of goods or services, there are several other types of trademarks:

• Collective mark: owned by an association that its members use to refer to products with a certain level of quality and agree to comply with specific requirements set by the association. For example, these associations may represent accountants, engineers, or architects.
• Certification mark: issued for compliance with defined standards but not limited to any member.

Guide to Trademark Registration in Namibia

Trademark registration required

• Distinctiveness: A trademark must be distinctive, meaning it must be able to distinguish the goods/services of the business it represents from other businesses in the same or other industries.
• Non-hype: Trademarks must not be exaggerated, such as “first class”, “best quality”, “top quality”, “best”, etc
• Non-offensive: The trademark must not contain offensive, offensive, immoral or misleading elements/phrases, or any words that would be considered offensive in certain cultures/beliefs/communities/traditions.
• Not identical or confusing: A trademark must also not be identical or confusing to a trademark registered by another applicant for similar goods/services.
• Do not use official emblems: Trademarks should not include coats of arms, seals or flags; or any sign indicating State patronage.

Procedure for trademark registration

• Similarity Check: Trademark applicants should first conduct a trademark similarity test on BIPA’s trademark database to confirm the availability of the trademark being filed.
• Application form: Once it is certain that the trademark is available, the applicant must obtain a Trademark Application Form (Form TM 1) from the IP Office or MITSMED Regional Office.

Instructions for filling out the trademark application form (TM1)

• Features of the Trademark: Write the brand name of the applicant or paste an image representing the trademark of the applicant (in the case of logos or combinations of logos and words).
• Select the class of goods/services: Select the class of goods/services according to the Nice International Classification that best describes the goods/services the owner intends to provide through his trademark.
• Details of goods/services: Specify the goods/services the owner intends to provide through the trademark according to the selected industries. Even if the wording may not be the same as what is listed in the selected industries, the goods/services must still be relevant to the selected industries (strictly applicable).
• Information about the applicant: Write the name of the applicant’s company or the personal name of the applicant if the applicant does not already have a company name.
  • Nationality of the applicant
  • The actual business address of the business or the personal residential address of the applicant, or the address where the business is conducted (depending on whether the applicant is an individual or a company)
  • Contact address: Ask for the name of the applicant (if an individual) or company, or the name of the legal representative (in case of filing through other intellectual property representatives).
• Confirmation of application: Next to the Applicant’s Name, the applicant needs to re-sign the applicant’s name (whether a company name or a personal name).
• Trademark Features: A description of the applicant’s trademark. If a combination of words and logos is included, or even just the logo, the applicant needs to write a brief description of the applicant’s trademark (This helps the data collector record the trademark on the Trademark Database (IPAS) system as it must be entered according to the description).
• Application: After completing the form, pay the fee of N$600 for the first class and N$480 for each additional class at the cashier (EFT as well) and submit the applicant’s application at the Trademark Office along with the payment receipt.
• Attach a logo drawing: In case the trademark is in the form of a symbol/logo, or a combination of symbols

How to file for trademark registration in Namibia

To file for trademark protection in Namibia, you can apply by the following filing methods:

• Direct submission: You can go directly to the Intellectual and Industrial Property Management Office (BIPA) of the Ministry of Industry and Trade (MIT) at 3 Ruhr Street, PZN Holdings Building, Windhoek, Namibia to submit your application and related documents.
• By Post: You can send your application and all required documents via postal service or courier service to the address of the Intellectual and Industrial Property Administration (BIPA) under the Ministry of Industry and Trade (MIT) at 3 Ruhr Street, PZN Holdings Building, Windhoek, Namibia.

Trademark registration in Namibia through the ARIPO system

ARIPO (African Regional Intellectual Property Organization) is an intergovernmental organization providing intellectual property registration and protection services in 19 African countries.

Trademark registration dossier in Namibia via ARIPO system

A dossier for trademark registration in Namibia through the ARIPO system includes the following documents:

• Application Form: The applicant completes information about the trademark, owner, product/service, etc. on the ARIPO Form TM1 which can be downloaded from the ARIPO website.
• Trademark image: The applicant needs to provide a clear image of the trademark with a minimum size of 5 cm x 5 cm and JPG, JPEG, PNG or TIFF format (if applying online)
• List of goods/services: The applicant lists all goods/services for which the applicant wants trademark protection. The applicant needs to use the Nice Classification Table to classify goods/services.
• Power of attorney (if applicable): If the applicant authorizes another person to represent the applicant during the registration process, a power of attorney is required.
• Receipt of payment of fees

Prepare documents as stated above

State fee

Trademark registration in Namibia through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Namibia acceded to the Madrid Accords on 30 June 2004.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Namibia acceded to the Madrid Protocol on 30 June 2004.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Singles consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with Namibian designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classs of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

If you need to file a trademark application, please contact Viet An Law Firm, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the most effective support.

Update: 9/2024