Wednesday, 13 August 2008

Gambia: extension of UK registered rights

This week the UK Intellectual Property Office has updated its guidance on the extension of UK intellectual property rights abroad, revising its information concerning The Gambia. Following the coming into force last year of the Industrial Property Act, the position is as follows:
* An application for a patent based on an existing UK patent, made within three years of the UK date of issue, will normally be granted and the patent will expire at the same time as the UK patent.

* An application for a patent based on an existing European patent designating the UK, made within three years of the date of issue registration, will also normally be granted, the patent expiring at the same time as the with EP(UK) patent.

* An application for registration of a trade mark must be made within four months of the UK application, giving the UK filing date as the priority date.

* UK design registrations are automatically extended.

1 comment:

Craig Kahn said...

The content of this blog is not entirely correct and the current position in Gambia is not as set out in it.

If one follows the link to the UK Patent Office website, the information has been updated to show that the Gambia is an Independent member within the Commonwealth. The UK Patent Office then correctly mentions that a new “Industrial Property Act" came into force on 2 April 2007 and, as a result, the Gambia will no longer be re-registering any UK patents etc.

However, the UK Patent Office omitted to remove the information on extensions and re-registrations of UK intellectual property (IP) rights. The Gambian “Industrial Property Act" repealed:
• The Registration of United Kingdom Patents Act 1925, which afforded protection in Gambia to granted UK Patents by re-registration locally.
• The United Kingdom Designs (Protection) Act 1936, which gave automatic local protection to subsisting UK design registrations; and
• The Trade Marks Act 1916, which established a national trade mark system based on the UK law before 1938 and so extended to goods, not services, under the early UK classification of 50 classes.

In order to obtain patent, design or trade mark protection in Gambia, one must file a national application in Gambia. However, to date, no Rules or Regulations have been prepared or brought into force.

The “Industrial Property Act" has transitional provisions which gave UK patent and design rights holders 12 months until 2 April 2008 in which to re-register their UK patents and designs in Gambia.

Even though the transitional period has expired, The Gambian Registrar is still accepting re-registration of UK patents and designs. However, there is doubt as to whether or not any enforceable rights will be granted for such re-registrations as this is clearly not provided for by the “Industrial Property Act".
For completeness, the transitional provisions also provide for the Registrar to make any further transitional or saving provisions which appear to him to be necessary or desirable within 18 months from the coming into force of the Act, i.e. until 2 October 2008. As far as we are aware, the Registrar has not made any further transitional provisions.

For further information on the current situation in Gambia, please refer to the following links: