BY Ilse du Plessis AND Vianca McCall
Recent changes to the trade mark registration processes of ARIPO and OAPI
There are two regional trade mark registrations systems in Africa that allow applicants to file applications via central registration offices. Recent changes to both of these systems mark positive changes for trade mark owners who wish to protect their trade marks in Africa.
The African Regional Intellectual Property Organization (“ARIPO”), with its central office in Harare, Zimbabwe, allows for the filing of a single trade mark application which, once registered, is effective in each designated member state. Although 11 African countries have acceded to ARIPO’s Banjul Protocol on Marks, only Botswana, Malawi, Mozambique, Namibia, Sao Tome & Principe and Zimbabwe have so far made legal provision for the recognition and enforcement of ARIPO registrations domestically.
In December 2021, the ARIPO Administrative Council announced the adoption of amendments to the Banjul Protocol, which came into effect on 1 January 2022. Here are some of the more significant amendments:
- There will now be a fixed period of 12 months for the registration fees to be paid after a trade mark application has been accepted and published. If not, it will be deemed to have been withdrawn. This is expected to significantly reduce the number of trade marks pending registration and will hopefully streamline the overall registration process.
- Early publication of a trade mark application can now also be requested, provided all designated member states have accepted the application. This amendment should benefit proprietors who need to enforce their trade marks on an urgent basis.
- Finally, adherence to official deadlines will be strictly enforced. In the absence of securing an extension, a trade mark application or registration (as the case may be) will be deemed to have lapsed one month after the deadline. Again, this amendment is probably aimed at streamlining the registration process and reducing delays and backlogs.
The Organisation Africaine de la Propriété Intellectuelle (“OAPI”), is a union of 17 countries (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo) with a common IP regime and a central IP office based in Yaoundé, Cameroon. An OAPI application automatically covers all member countries.
Significant amendments have been made to the Bangui Agreement, which governs the OAPI trade mark registration system. These amendments took effect on 1 January 2022, which include following:
- The definition of a trade mark has been expanded to include sound, audio-visual and certification marks, bringing it in line with many other jurisdictions in this respect.
- Where it was previously necessary to separate goods and service classes in multi-class applications, these can now be included in one multi-class application. This amendment will allow for a significant reduction in filing costs.
- Trade marks will now be advertised for opposition purposes before registration and the opposition period will be reduced to three months instead of six months. This should bring about more certainty and avoid the unusual situation of an opposition being filed after a registration certificate has been issued.
- Another welcome amendment makes provision for the division of a multi-class trade mark application at any stage prior to registration, which will allow accepted goods or services in an application to proceed to advertisement sooner. Previously, advertisement would have been delayed pending the resolution of a provisional refusal.
- An interested party can now also file a “claim of ownership” objection on the basis of prior use of a trade mark. If successful, the registry will assign the trade mark in question to the claimant. This amendment effectively gives recognition to common law rights in trade marks, which is another significant development.
- Official fees have also been updated, with a reduction of the filing fees. However, these will no longer apply to up to three classes, as each class will attract its own fees.
Although International Registrations designating OAPI are now formally recognised in the Bangui Agreement, not all of the OAPI member states have ratified OAPI’s accession to the Madrid Protocol, with the result that the validity and enforceability of OAPI designations remain questionable.
Ilse du Plessis
IP | Executive
+27 82 411 7547
IP | Associate
+27 79 868 8576