VICTORY FOR TINTAS ROBBIALAC: COURT ANNULS TRADE MARK EXPIRY DECLARATION

 The Administrative Court of the City of Maputo issued Judgment No. 20/TACM/2024, dated June 12, 2024, granting the contentious appeal filed by TINTAS ROBBIALAC, SA SOCIEDADE PORTUGUESA against the order of the Director of the Industrial Property Institute of Mozambique (IPI) that declared the expiry of the international trade mark registration No. 71564OROBBIALAC. The decision annuls the administrative act due to a lack of legal basis.

Tintas Robbialac, the holder of the international trade mark registration since 1999, with extension to Mozambique in the same year, appealed the IPI's decision to declare its trade mark expired at the request of the Interested Party, TINTAS BERGER MOAMBIQUE LIMITADA. The Appellant argued that it had always complied with the Declarations of Intention to Use (DIU) and renewals necessary to maintain the validity of the registration.

The case records showed that Tintas Robbialac expressed its intention to use the trade mark within the legal deadline, on January 15, 2014, for renewal purposes, in accordance with Article 127 of the Industrial Property Code (CPI). Surprisingly, on March 20, 2018, the IPI granted the request for the declaration of trade mark expiry, publishing the decision in the Industrial Property Bulletin (BPI) No. 109, dated May 15, 2019.

The Court considered that the grounds for the declaration of expiry violated the provisions of Article 10 of the CPI. This article stipulates that, at the time of filing applications, IPI officials must verify the correctness of the documents and the payment of fees. Any deficiencies found subsequently must be notified to the applicant so that they can rectify the irregularities within 15 days. Failure to comply with this procedure implies withdrawal of the application.

In the present case, the Court found no evidence of any notification to Tintas Robbialac to rectify any irregularities. Furthermore, it was noted that the IPI itself issued a trade mark search result on April 24, 2014, informing that the trade mark had been renewed with extension to Mozambique and that the declarations of intention to use had been submitted, even acknowledging an error in the indication of the first DIU.

For the Court, this information demonstrates that the renewal of the trade mark was considered valid by the IPI itself. Thus, it is incomprehensible how a successfully processed renewal could be extinguished due to expiry resulting from the non-payment of fees, when the renewal had already been processed.

Even if there had been a failure to pay fees in the context of the renewal, the Court emphasized that the IPI had a legal obligation to notify the Appellant to remedy this irregularity, in accordance with paragraph 2 of Article 10 of the CPI, which did not occur.

Additionally, the Court found that, considering the renewal date of January 15, 2014, plus five years, the trade mark would only expire on January 15, 2019, meaning that the declaration of expiry was issued within the validity period of the renewed trade mark.

Based on these grounds, the Panel of Judges of the Administrative Court of the City of Maputo, endorsing the favorable opinion of the Public Prosecutor's Office, unanimously decided to uphold the appeal of Tintas Robbialac and annul the administrative act that declared the expiry of the ROBBIALAC trade mark registration due to a lack of legal basis.

This decision represents a significant victory for Tintas Robbialac, reaffirming the importance of administrative authorities complying with legal procedures and guaranteeing the protection of companies' industrial property rights.