1 Legal framework
1.1 Which laws and regulations govern trademark litigation in your jurisdiction?
- 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.
1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?
- 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.
1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?
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.
2 Forum
2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?
Trademark infringement and validity are handled before the same forum (court).
2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?
A judge. However, depending on the nature and complexity of the case, the parties can request a panel.
2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?
No.
3 Parties
3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?
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.
3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?
Infringement actions must be brought before defendants based in Cameroon.
3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?
Yes. See question 3.1.
3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?
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.
3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?
No.
4 Trademark infringement
4.1 What constitutes trademark infringement in your jurisdiction?
- 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.
4.2 How is infringement determined?
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.
4.3 Is wilful infringement recognised? If so, what is the applicable standard?
There are no such provisions under Cameroonian law.
5 Bringing a claim
5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?
It can make an interlocutory application requesting seizure of the counterfeit goods.
5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?
Five years.
5.3 Must the alleged infringer be notified in advance before a claim is brought?
Yes.
5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?
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.
5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?
Interim remedies usually take the form of court proceedings leading to a ruling which is executed immediately pending the substantive action.
5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?
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.
6 Disclosure and privilege
6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?
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.
6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?
See question 6.1.
6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?
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.
7 Evidence
7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?
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.
7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?
In Cameroon, counterfeiting can be proven by any means.
Expert and investigative evidence are commonly used in trademark infringement litigation.
7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?
Yes.
7.4 What are the applicable standards of proof?
- Reports drawn up by judicial police officers; and
- Bailiffs' reports drawn up at the request of individuals.
7.5 On whom does the burden of proof rest?
The burden of proof rests with the party bringing the infringement action.
8 Defences and counterclaims
8.1 What defences are typically available in trademark litigation?
- 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.
8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?
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.
8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?
This is quite rare.
9 Settlement
9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?
Extrajudicial methods of dispute resolution are optional for the parties.
9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?
Yes. An amicable settlement between the parties can end the proceedings in court.
9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?
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.
10 Court proceedings for infringement and validity
10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?
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.
10.2 Can a trademark owner sue for infringement and passing off in the same action?
Yes.
10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?
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.
10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?
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.
10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?
The court can only issue injunctions in its jurisdiction.
10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?
To some extent, a foreign judgment may influence a court decision, but the final decision rests with the judge.
11 Remedies
11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?
- 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.
11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?
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.
11.3 What factors will the courts consider when deciding on the quantum of damages?
The judge assesses loss of earnings and the damage suffered by the applicant.
12 Appeals
12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.
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.
12.2 What is the average time for each level of appeal in your jurisdiction?
There is no specific timeframe for appeal proceedings. However, all things being equal, they can take between two and four years.
13 Costs, fees and funding
13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?
The costs will vary depending on the intricacies of each case. The winning party can recover its costs.
13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?
No.
13.3 Is third-party litigation funding permitted in your jurisdiction?
Cameroonian legislation is silent on this topic.
14 Protection of unregistered marks
14.1 Is any protection available for unregistered marks in your jurisdiction?
Yes.
14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?
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.
15 Trends and predictions
15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?
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.
16 Tips and traps
16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?
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.
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.
