Madrid is here to stay-embrace it! (Part 1)

What are the benefits and risks of filing through the system? And is it enforceable in all African member states?

One of the major talking points at last years INTA Building Africa with Brands conference held in Cape Town, South Africa was Madrid in Africa – The benefits and risks of filing through the system and whether it is enforceable in all African member states?

Africa Map - Enforceability

Despite a lack of a great deal of examples of their enforceability in African member states, International Registrations (IRs) applications continue to be be filed in them with the figures steadily increasing. The following filing statistics for the period 2008-2015 were issued by WIPO (the World Intellectual Property Organisation):

 

Table 1: Number of applications for International Registrations filed through African member states or designating African member states for the period 2008-2015. Source: http://www.wipo.int/madrid/en/statistics/

Some interesting points to note from the WIPO statistics

Out of the 21 African member states, only Gambia, Lesotho, Liberia, Swaziland, Zambia and Zimbabwe have never been the office of origin of an IR.

Morocco and Egypt are frequently the office of origin for IRs with 578 and 227 IR applications having been filed through these offices respectively in the period 2008-2015 – 61.49% and 24.15% respectively of total applications filed through African member states.

The third most frequent African country of origin for IRs is Kenya with 50 applications filed in the period 2008-2015 (5.32% of total applications filed through African member states).

Since accession, OAPI has been designated in 1,128 applications (721 at filing and 407 subsequent designations) in 2015 alone. We were also informed by the OAPI Registry officials during our recent visit that one third of all applications received in the period March 2015-March 2016 were for IRs.

In the period 2008-2015, Egypt and Morocco were the most designated African countries with 32,445 (26,589 initial and 5,856 subsequent) and 32,278 (26,970 initial and 5,308 subsequent) designations respectively – 17.58% and 17.49% respectively of total designations of African member states.

Gambia and Zimbabwe have been designated in 19 (all subsequent designations) and 434 (289 initial and 145 subsequent designations) applications respectively since their respective accessions in 2015.

For more information on the Madrid Protocol, please email Rouse Africa.