Madrid is here to stay-embrace it! (Part 2)
In the first part of this series we asked, "What are the benefits and risks of filing through the system? And is it enforceable in all African member states?" Part 2 of this series delves into one of the questions that clients frequently ask in relation to international registrations, "is it safe to rely on your IR’s designations in Africa?"
Despite the fact that there have been numerous designations of African member states, the practical fact of the matter is that the enforceability of international registrations (IRs) in Africa is still very much uncertain and untested in many countries.
Based on various factors, including the legal history of the various member states (for example, whether the country is a civil or common law country), legislation, regulations and practices in place in these countries and the opinions of local experts, the situation regarding the enforceability of IRs in the African member states appears to be as follows:
Due to the history of its member states, OAPI can be considered to be a civil law jurisdiction, which means that international treaties should in principle bind it automatically. However, as the OAPI office recently acceded by a resolution of its administrative body, to the Madrid Protocol instead of the Individual member states there has been some questions about the validity of the accession.
In addition, the Bangui Agreement (the regional treaty which makes provision for the operation of OAPI and the registration of trade marks with the OAPI office) has not been amended to make provision for the recognition of IRs, which would require the agreement of the member states.
Having read a number of opinions on the matter, it appears that the general feeling is that the enforceability of an IR in an OAPI member state is questionable without the Bangui Agreement having been amended. However, following our meetings with the OAPI Registry officials during our recent visit there, it is clear that they are likely to do all that is necessary to ensure that IRs designating OAPI have the same effect as direct registrations.
OAPI is one of the few African territories where the IR registration certificate is not sufficient in order to enforce the IR. In addition to the IR registration certificate, a document proving that the trade mark is still valid and subsisting at OAPI can be required by the national courts in a civil action - so-called "certificate de non-radiation" or "certificate de non-decheance".
The Madrid Protocol has been domesticated in Ghana’s national legislation with effect from 25 July 2014 and as such IRs designating Ghana are enforceable. Although such registrations are provided for in the Ghana Trademarks Act and it is now possible to file applications for IRs with the Ghana Trademark Office, there are currently no systems in place for such applications to be examined. As such, applications proceed to grant in respect of Ghana without them having been examined, which leads to some uncertainty about the enforceability of such IRs.
Ghana is another of the few African territories where the IR registration certificate is not sufficient in order to enforce the IR. In addition to the IR registration certificate, the Registrar may require a copy of the earlier application certified as correct by the office with which it was filed.
Lesotho is a common law country (which means that international treaties must be domesticated before they are enforceable in Lesotho) and it has not yet domesticated the provisions of the Madrid Protocol. However, its trade mark legislation contains a general provision that stipulates that the provisions of any international treaty in respect of industrial property to which Lesotho is a party shall apply to matters dealt with by the relevant act and, in case of conflict with the provisions of that act, the provisions of the international treaty shall prevail.
Despite this general clause, the enforceability of IRs in Lesotho is not clear and there are no regulations in place to regulate how applications for IRs are dealt with by the trade mark office. However, the trade mark office insists that IRs are enforceable in Lesotho, as they are treated within the framework of the existing national laws. The trade mark office is busy consolidating applications filed through WIPO, ARIPO and nationally into a single database. Although the process is in the early stages, the trade marks office has started to refuse national applications on the basis of earlier filed IRs.
Namibia is a common law country and the provisions of the Madrid Protocol have not been domesticated into its national laws in order to provide for the recognition of IRS.
It would appear as though the Trade Mark Office in Namibia is accepting IR applications, which are then forwarded to WIPO. However, the validity of these applications are questionable as the Trade Mark Office does not process or examine these IRs. It is therefore advisable to file national applications until such time as The Industrial Property Act 2012 comes into force. The 2012 Act contains detailed provisions for Madrid registrations and should render IRs enforceable.
Sierra Leone, Swaziland and Zambia
These are common law countries and the provisions of the Madrid Protocol have not been domesticated into their national laws in order to provide for the recognition of IRs.
It is interesting to note that, despite the fact that the Madrid Protocol has not been domesticated into Zambia’s national law, the Trade Mark Office does cite IRs against national applications. Despite this, it is questionable at best as to whether an IR would be valid or enforceable in Zambia and this is so far untested.
Zimbabwe is a common law country and its Act has been amended to incorporate IRs into their law. However, the statutory instrument required to bring the provisions of the Madrid Protocol into operation has not yet been passed and therefore IRs are not enforceable in Zimbabwe.
Recently released figures by WIPO show that in 2016 Zimbabwe had 741 designations.The applications having been received by the Zimbabwean trade marks office have yet to be processed due to to a lack of implementing legislation. That notwithstanding, the confidence of the rights holders may have possibly inspired the legislature who according to local reports have moved the implementing legislation up the legislative agenda,
It is clear that there is a global move towards a more unified trade mark registration system, with Madrid and the opportunity it offers to have a single registration that covers the entire world being at the forefront of this development. More and more countries are acceding to the Madrid Protocol and/or Agreement every year, and WIPO is investing a lot of money into assisting African member states to upgrade their systems to accommodate the filing and processing of IRs. This trend is likely to continue and trade mark owners and IP attorneys alike will find it in their interest to embrace this change and to take advantage of the benefits offered by filing applications for IRs where this is possible.