OAPI

The first of Africa’s trade mark filing system is OAPI. This is French acronym for ‘Organisation Africaine de la Propriété Intellectuelle’ (in English: African Intellectual Property Organization).

This came about in 1962 when a group of newly independent (from France) Central and West African countries, without their own trade mark laws, formed a unitary system with Madagascar. It was called OAMPI at the time; the additional ‘M’ for Malagasy.

In 1977, it became OAPI and today consists of 17 member states:

While most of the members have French as their official language, it’s not the case for all. In Cameroon – where the OAPI Office is based – English is co-official. This is helpful as it means specifications of goods and services can be filed in English.

It is a unitary system and so covers all of the countries – like the EUTM – and you do not and cannot pick and choose the countries you want to cover. It’s all or nothing.

It is a ‘normal’ trade mark jurisdiction, working in a similar way that most countries do. Priority is possible. Registrations last for 10 years and can be renewed for 10 years with a six-month grace period provided. While delays are not unheard of, OAPI functions decently. There are applications filed in August that have already been accepted and published in October. Registration can often be secured within a year.

It’s not the cheapest of trade mark jurisdictions as official fees are high but then you are getting 17 countries in one, covering a population of c. +230 million people.

OAPI acceded to the Madrid Protocol (for International trade marks) in March 2015. It did so ex officio and without the formal agreement of the member states meaning there have been doubts as to the enforceability of International Registrations designating OAPI. They have amended the law since then and upon ratification by 12 of the 17 members, it came into force. There is still some ambiguity in wording where it does suggest the individual countries should also accede to the Madrid Protocol (which they have not). If there is a need to enforce, this would take place before national courts. Until there have been positive decisions, the less risky approach would be to file direct applications rather than through the International system.

ARIPO

ARIPO stands for the African Regional Intellectual Property Organization. For trade marks, it is countries that have signed up the Banjul Protocol that can be selected:

It works like the Madrid Protocol for International marks in that you pick-and-choose which countries you wish to include so it’s a different system to OAPI.

Many of these countries have not made provisions for ARIPO in their national law, although we believe it is the case for Botswana, Malawi, Mozambique, Namibia and Zimbabwe. Cabo Verde and São Tomé and Príncipe arguably do not need to make local provisions in their laws, as civil law countries the Banjul Protocol should apply once ratified by their governments. Ultimately, decisions on their enforceability would be down to national courts.

In relation to court decisions, we have opposite decisions coming from Uganda and Tanzania, both countries that have not incorporated the Banjul Protocol into their national legislation.

In Uganda, there are judgments indicating that an ARIPO registration would be regarded as an “international trademark”for the purpose of enforcement.

However, more recently, the Tanzanian courts in an appeal decision have determined, “it is common ground... that Tanzania had not ratified the corresponding Banjul Protocol”. This has prompted ARIPO to issue a notice saying "Tanzania is ineligible for designation under the Banjul Protocol until further notice". We would recommend reviewing any designations of Tanzania that have been made within ARIPO applications.

In conclusion, it would simply be better to rely on national registrations in many of the ARIPO members if looking to enforce rights.

Madrid International trade marks

In a similar vein, relying on the Madrid Protocol to get protection in African countries that have not enshrined it in their national laws must be considered risky.

Enforcement

While this points to difficulties in enforcing ARIPO and Madrid trade marks in some Africa jurisdictions, are they completely worthless?

In my opinion, not necessarily. As long as we are clear that if such a registration is properly challenged then we may find ourselves on shaky ground, I feel that they can still provide some value.

If you are getting a Certificate then this represents something you can show to third parties or e-commerce platforms and they may take action based on it due to their (limited) resources (financial or otherwise). A third party may stop using. An e-commerce platform may take down a listing. Be wary that for Madrid filings, you may get only tacit acceptance and a Statement of Grant will not get issued. Be very cautious taking things to court as chances there won’t be so good.

The International Register, in particular, it being well maintained and digitised, is often included in trade mark searches. Anything found during these searches can be a deterrent. On the other hand, the appetite to risks from some businesses means that national register searches may be out of scope for some countries. They can also be more unreliable, particularly if you must rely on a Registry official to conduct the search on your behalf.

You simply tick a box to include a country in an International application, it’s an easy step administratively and, often, the fees paid are very low. As we know, filing nationally is likely to require the administrative hassle of supporting documents and tends to involve higher fees.

Getting a registration that would fall down if ever enforced isn’t ideal but it may serve as a “keep off the grass sign” and it can serve other purposes, within a budget, as long as we understand what the limitations are on how far it can go or if a third party seeks to challenge it. It’s easy to be academically black and white about these i.e. absent provisions in the local legislative frameworks, these registrations are not enforceable and worthless. A more nuanced view is better, in my view, and one that takes into account commercial and budgetary realities.