South Africa: Madrid Protocol: Issues In Africa

Last Updated: 6 May 2015
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2016

OAPI has been much in the news of late. For those of you who don't have much experience in registering trade marks in Africa, OAPI is the regional IP union that covers much of French-speaking Africa. OAPI came about as a result of a treaty between the member countries (the Bangui Agreement). As a consequence of the Bangui Agreement, the only way of getting a trade mark registration in the countries mentioned at the foot of this article is through a single OAPI registration, which automatically covers all the member countries (the same applies to patents by the way, but this article is all about trade marks). An OAPI trade mark registration is a bit like the Community Trade Mark that covers all of the European Union, but the big difference is that in the OAPI countries there's no alternative of national registrations as there is in the EU.

On 5 March 2015 OAPI officially became part of the international trade mark registration system (the Madrid Protocol), thus adding significantly to Madrid's growing footprint in Africa (a list of the African countries that belong to the Madrid Protocol also appears at the foot of this article). OAPI joined the Madrid Protocol as a region, in much the same way that the EU did. The effect of this is that anyone who wants protection in OAPI can now, as an alternative to filing an OAPI application, simply designate OAPI as a region in an application for an international registration. A further consequence that's likely to be of less practical significance is that anyone who's based in an OAPI country can file an OAPI application, and then file an application for an international registration based on that OAPI application.

OAPI's accession to the Madrid Protocol has caused quite an uproar. There are lawyers who practice within the OAPI region who argue that the accession was invalid, and that OAPI designations of international registrations will not be valid. The argument goes like this. OAPI, which is not a country but simply an IP union that came about by way of an agreement between the member countries, can only make a substantial change like one that allows for the organisation to recognise international trade mark registrations by way of an amendment to its founding document, the Bangui Agreement. But this never happened here. Rather, OAPI's Administrative Council 'acceded' to the Madrid Protocol by way of a resolution that it passed called the Regulation Relating to the Registration of International Registrations.

The lawyers who feel that the accession was invalid have had quite a lot to say, and they have formed a grouping called 'Collectif des Conseils en propriété industrielle'. Their criticisms have obviously stung the OAPI hierarchy. So much so that OAPI has reacted in a truly remarkable way – it has suspended the lawyers involved, and withdrawn their right to act in OAPI matters.

The Director General of OAPI is reported in the Afro-IP blog to have said that the criticisms amounted to 'an attempt to discredit and destabilize the organization'. The Director General of OAPI apparently issued a communique that read as follows: 'Thepatent attorneysinvolved in this campaign and the firmsthey are attached to, will not be allowedto represent clients at OAPIfor any action ...they are also banned from advertising their firms as official agents / attorneys of OAPI.' On 15 April 2015 the publication World Trademark Review - in an article entitled OAPI steps up search for anti-OAPI agents as "dismissed" lawyer speaks out - reported that the lawyer who is regarded as the leader of the Collectif was dismissed by his firm after OAPI made it clear to the firm that it would lose its OAPI accreditation if it kept him on.

Whether or not the lawyers affected will contest OAPI's actions by way of court proceedings remains to be seen!

Until such time as this matter is clarified - either by way of a court decision, or possibly by way of a detailed and convincing explanation by WIPO and/or OAPI - our advice is that trade mark owners should be cautious. We think that it would be very risky for any trade mark owner to use the Madrid Protocol as a way of getting protection in OAPI at this stage. We must also emphasise that our OAPI filing practice has not been affected by OAPI's suspension of lawyers.

It's worth noting that the issue with OAPI's accession is not the same one that arises in what is sometimes referred to as 'common law countries' (of which there are quite a few in Africa). The argument here is that international registrations designating certain African countries have no effect because in a British law country an international agreement (like the Madrid Protocol) does not automatically become effective on signature, but only when the country incorporates the agreement into its national law by statute, something that these countries have failed to do.

Zimbabwe, which has also recently become a member of the Madrid Protocol (15 March 2015), is a common law country, and some lawyers argue international registrations that designate Zimbabwe will be invalid until such time as Zimbabwe passes a law that incorporates the Madrid Protocol. Having said that, Namibia is another common law country that belongs to the Madrid Protocol, however, the Registry officials take the view that legislation isn't required to make the Madrid Protocol valid (although it's also worth noting that there is legislation pending in Namibia, the Industrial Property Act of 2012, which does specifically incorporate the Madrid Protocol into Namibian law).

Interesting times indeed!

The OAPI countries are: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.

The African countries that belong to the Madrid Protocol (other than those that belong to OAPI) are: Algeria, Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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