- Annex III of the Bangui Agreement of 14 December 2015 dealing with product or service trademarks;
- Regulatory instruments of the Bangui Agreement;
- The Penal Code and the Criminal Procedure Code;
- The Civil and Commercial Procedure Code; and
- Existing jurisprudence and doctrine.
- The Paris Convention of 20 March 1883 for the Protection of Industrial Property;
- The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989;
- The Singapore Treaty on the Law of Trademarks of 27 March 2006; and
- The Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Trademarks of 15 June 1957.
In the context of administrative litigation, the Higher Commission of Appeal of the African Intellectual Property Organisation (OAPI) is responsible for the application of the laws on the opposition procedure and the claim of ownership of a trademark.
In the context of legal disputes, the courts of OAPI member states are responsible for applying the laws regarding civil and criminal action.
Trademark infringement and validity are handled before the same forum (court).
A judge. However, depending on the nature and complexity of the case, the parties can request a panel.
No.
The owner of the mark has the right to bring an action for infringement. To do so, it must present:
- its trademark registration certificate; and
- evidence of counterfeiting.
In addition, the trademark must not have been subject to cancellation or nullity.
Infringement actions must be brought before defendants based in Cameroon.
Yes. See question 3.1.
A national trademark can be cancelled only if the applicant has received a final judgment from the court ordering the same. The ground for cancellation is proof of the existence of a prior right by the applicant. Once a final judgment has been rendered, the applicant must notify the registry and request cancellation.
No.
- Fraudulently affixing a third party’s trademark to one’s own goods and services;
- Knowingly selling products that bear a counterfeit trademark;
- Fraudulently imitating a trademark in a way that is likely to deceive the buyer or using a fraudulently imitated trademark; and
- Using a trademark bearing indications that are likely to mislead the buyer about the nature of the product.
Infringement can be proven by all means of proof accepted in civil law, such as:
- bailiff’s reports drawn up at the request of individuals;
- advertisements or products reproducing the disputed sign purchased in the defendant’s store;
- reports of judicial police officers; and
- pictures or videos of infringing products.
There are no such provisions under Cameroonian law.
It can make an interlocutory application requesting seizure of the counterfeit goods.
Five years.
Yes.
To file a summons or complaint for trademark infringement, the victim must:
- prove that the trademark is registered;
- produce proof of non-cancellation and non-forfeiture; and
- pay the applicable official fees.
There are no requirements relating to the details that must be included in the complaint.
Interim remedies usually take the form of court proceedings leading to a ruling which is executed immediately pending the substantive action.
In the context of counterfeiting seizure, the judge may impose a bond on the applicant to guarantee the remediation of any harm that the seizure could cause.
As far as trademark disputes are concerned, there are no particular rules on disclosure per se. Parties must disclose all evidence to support their case. They can also be compelled to do so based on a court order.
See question 6.1.
Persons of a particular status (ie, diplomats and senior government officials) may be subject to privilege, according to which certain information need not be disclosed. However, they may be compelled to disclose based on an order from the court.
In order to collect and present evidence in trademark infringement litigation, the plaintiff may resort to:
- an infringement seizure; or
- investigations carried out by judicial police officers.
In Cameroon, counterfeiting can be proven by any means.
Expert and investigative evidence are commonly used in trademark infringement litigation.
Yes.
- Reports drawn up by judicial police officers; and
- Bailiffs’ reports drawn up at the request of individuals.
The burden of proof rests with the party bringing the infringement action.
- Lack of capacity to bring the action;
- Failure to pay relevant court fees;
- Poor or improper service on the defendant;
- Expiration of the statute of limitations;
- Lapsing of the trademark in the public domain;
- Lack of ownership of the trademark by the applicant; or
- Distinctiveness of both trademarks.
Yes, the defendant may counterclaim for revocation or invalidation of the trademark.
The alleged infringer may do so by filing a written statement to the court or through an interlocutory application.
This is quite rare.
Extrajudicial methods of dispute resolution are optional for the parties.
Yes. An amicable settlement between the parties can end the proceedings in court.
To terminate ongoing proceedings before the court, the results of the settlement discussions should be communicated to the court by producing proof of this arrangement at the hearing.
Upon receiving proof of amicable settlement, the court will dismiss the matter from the cause list.
Court proceedings are public.
The parties may maintain the confidentiality of the proceedings or related information by requesting that the proceedings be heard in chambers instead of in public.
Yes.
Validity and infringement actions are handled separately.
The main stages of a trademark infringement/validity procedure are:
- initiation of the cause of action;
- exchange of pleadings and court processes;
- exchange of oral arguments and hearing;
- issue of a decision by the court; and
- execution of the court judgment.
There is no specific timeframe regarding the duration of infringement or validity proceedings. However, all things being equal, they take between 12 and 20 months, provided that the case progresses smoothly.
The court can only issue injunctions in its jurisdiction.
To some extent, a foreign judgment may influence a court decision, but the final decision rests with the judge.
- Impoundment and destruction: The court can order the infringed goods to be seized, impounded or destroyed.
- Injunctions: The court can order the infringer to cease the infringement.
- Damages: The court can order payment of damages.
- Penal sanctions: These can include imprisonment and fines under the Penal Code.
Yes, punitive or enhanced damages are available. The assessment of damages is governed by the provisions of the applicable civil codes in African Intellectual Property Organisation member states.
The judge assesses loss of earnings and the damage suffered by the applicant.
Court decisions can be appealed. The grounds for appeal usually centre on a mistake by the lower court on points of either law or facts. The procedure is commenced by filing a notice of appeal and the grounds for appeal with the court of appeal.
There is no specific timeframe for appeal proceedings. However, all things being equal, they can take between two and four years.
The costs will vary depending on the intricacies of each case. The winning party can recover its costs.
No.
Cameroonian legislation is silent on this topic.
Yes.
If the trademark constitutes a well-known trademark within the meaning of Article 6 of the Bangui Agreement, Article 6bis of the Paris Convention and Articles 16(2) and (3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, it will receive protection even if it has not been registered with the African Intellectual Property Organisation Registry.
The trademark owner may apply to the competent domestic court to bring an invalidation action against a mark that is liable to be confused with its own.
The current landscape is evolving and there is still room for growth. Few trademark litigation cases have been registered in recent years.
There are no anticipated developments in the pipeline.
It’s crucial to seek advice from experienced trademark counsel immediately to guide you through the complexities. This will enable you to conduct a through internal review of your position, evaluate your potential exposure, and develop a sound litigation strategy.
One significant pitfall is underestimating the cost a time involved in the entire litigation process. Trademark litigation cases are generally lengthy and expensive, which can deter many clients from pursuing their case or seeing it to completion.
