Conductor Paul Masena—Advancing Companies’ IP in Botswana

Conductor Paul Masena, Companies and Intellectual Property Authority (CIPA), Gabarone, Botswana

Conductor Paul Masena was appointed as the inaugural Registrar General of Botswana’s Companies and Intellectual Property Authority (CIPA) in 2013. There, he has overseen amendments to national law and led reductions in turnaround times for companies registering in the country.

Previously, he had a long history at Botswana’s IP authority (reaching back well before the establishment of CIPA) and has played key roles at the Africa Regional Intellectual Property Office (ARIPO), including guiding the adoption of landmark rules on traditional knowledge and expressions of folklore.

Mr. Masena spoke with the INTA Bulletin about the latest developments, challenges, and upcoming plans in Botswana.

Please briefly describe CIPA’s mandate.
The Companies and Intellectual Property Authority was established by an Act of Parliament (Companies and Intellectual Property Authority Act, CAP 42:13), which was enacted in July 2011. The Office has seven divisions: Companies and Business Names, Industrial Property, Copyright, Information Technologies, Compliance Awareness and Client Services, Legal, and Corporate Services.

CIPA is mandated to register businesses and protect intellectual property rights through the administration of four pieces of legislation, namely: The Companies Act (CAP 42:01); Registration of Business Names Act (CAP 42:05); Copyright and Neighbouring Rights Act (CAP 68:02); and the Industrial Property Act (CAP 68:03).

The [Industrial Property] Act is under review; most amendments relate to patents and other intellectual property (IP) areas. Under trademarks, significant amendments relate to introducing a tribunal for hearing oppositions and invalidations.

We have 11 employees at CIPA overseeing the administration and protection of industrial property rights. We’re seeing increased filing activity in Botswana, including through ARIPO.

Generally speaking, how do trademarks and other IP contribute to boosting economic diversification in your country?
Franchising, branding, merchandising, and licensing generate revenue for trademark owners, leading to increased economic activity and diversification.

On enforcement of IP in Botswana, is there increased activity in filing oppositions, infringements, and invalidations, and if so, could you explain it?
While the use of unregistered marks for any goods is legal in Botswana, there is an increase in oppositions, infringements, and invalidations. This is due to increased economic activity in Botswana and the government’s efforts to attract foreign direct investment to grow and diversify the economy.

We still have a backlog as CIPA does not have capacity to process the oppositions and invalidations. The process of reviewing the current IP law is ongoing and will include provisions to establish a tribunal to deal with trademark oppositions and invalidations.

How are counterfeit goods dealt with in Botswana?
Counterfeit goods are dealt with through an ad hoc interagency forum comprised of CIPA, Botswana Police, Botswana Unified Revenue Services, and Interpol. These stakeholders conduct raids of shops that sell counterfeit goods when there is a tipoff or complaint by brand owners. The stakeholders in the forum also conduct seizures of counterfeit goods that enter Botswana at the borders. Goods seized during the raids and at the borders are ultimately destroyed after getting court orders. To date, there have not been counterfeiting cases that went to the courts.

The Botswana Unified Revenue Services, which is the custodian of the Customs Law, is working on the implementing regulations for the custom recordal program for dealing with counterfeit goods. They are yet to confirm when they will be implemented.

Is there a mechanism for recording trademarks registered in Botswana with the Authority?
There is still no system of recording of trademarks registered in Botswana with the Customs Authority. The plan is to develop the system once the BURS has completed the development of the implementation regulations of the Customs Act.

What are some of the key areas of cooperation between CIPA and INTA?
The key areas of cooperation with INTA include capacity building on trademark examinations, technical advice on trademarks matters, and technical advice on dealing with anticounterfeiting matters.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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