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Custom Recordal of IPRs in Malawi


Custom Recordal of IPRs
The Trade Marks Act, 2018 (section 55) - forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Malawi.
Custom Recordal of IPRs is effective only on the import of goods.
An owner or licensee of a registered trademark may give notice in writing to the Commissioner General that he is the owner or a licensee of a registered trademark. On receipt of the notice, the Commissioner General shall take all necessary steps to ensure that the imported goods, materials, or articles do not infringe upon the registered trademark.
The documents to be submitted are as follows:
  • Furnish sufficient information and particulars of a trademark;
  • Pay such fees in respect of the notice as may be specified by the rules; and
  • The owner or licensee should specify the time and the place where the infringing goods, materials, or articles are expected to arrive in Malawi in addition to the other documents as may be required by the Commissioner General.
As soon as the notice of rights in favour of the IP rights holder are established, the Commissioner General in consultation with the Registrar begins to act on the request of the proprietor.
Yes, it is a centralized system.
There is no online system for recording the IPRs in Malawi.
Since the IPR holder has to specify the place and whether infringing goods, materials, or articles are expected to arrive in Malawi, the notice is effective only until that particular date and time.
Where the goods, materials, or articles are suspected of being infringing in nature of the original goods concerning which the IPR is registered by the righteous proprietor, the goods maybe suspended for clearance until the final determination is made.
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Where the IP rights holder is informed that the goods are of infringing nature, the disclosure of that information is made at the earliest. Thereafter, the investigation or prosecution of the offence is conducted. There is no fixed timeline to revert concerning the authenticity of the goods.
The IP rights holder or the applicant has to:
  • Give such security as may be so specified in respect of any liability or expense, which the Commissioner General may incur in the process of protecting the trademark; or
  • Indemnify the Commissioner General against any such liability or expense, whether the security has been given or not.
The customs authority informs both the parties about the detention of such goods. Thereafter, a suit for infringement action has to be instituted in the court of law by the IP rights holder where the final determination as to the nature of the goods is ascertained.
Yes, to enforce the respective IPR, a suit has to be filed by the IPR rights holder. Failure to join the proceedings shall lead to a termination of the investigation being made in furtherance of the notice made to the Commissioner General.
The Custom Recordal is not very formalized since it is a notice of information rather than a recordal of rights, per se. Therefore, a proper recordation system with appropriate statistic is deficient in Malawi.
The court may require submission of other documents as well to ascertain the rights of both the counterparts.
A person - who sells, imports, exports, lets for hire or distributes goods, or performs any services to which a forged registered trademark is applied or a registered trademark is falsely applied - commits an offence, and shall, on conviction, be liable to a fine of K5, 000, 000.00 and imprisonment for 10 years.