Q&A: trade marks in OAPI

By Spoor & Fisher

Anyone may apply, provided they are a natural or legal entity.

Registration of the trade mark confers on its owner the exclusive right to use the trade mark, or a sign resembling it, in connection with the goods or services for which it has been registered, and similar goods or services.

There are no time constraints in relation to the registration of a trade mark; however, in terms of the Paris Convention it is possible to claim priority based on the first application filed in a convention country. Such applications should, however, be filed within six months from the filing date of the trade mark in the convention country.

Time: filing receipts are issued approximately two months after filing, with a further delay of up to 18 months between official acceptance, advertisement and issuance of the certificate of registration.

Cost: the official fee for applying for a trade mark in up to three classes is €610. Applications may only be filed for goods or services, and it therefore follows that goods and services may not be filed for in the same application. There is an extra charge of €125 for the fourth and each extra class of goods or services.

OAPI is using the 9th Edition of the Nice Classification.

Examination is limited to formalities only and there is no examination as to conflicting prior rights. In cases of material irregularity, the applicant is notified and a two-month term is allowed for regularisation (extendable by 30 days). If the trade mark is found unsuitable for registration, the application will be rejected. In practice, an application will not be rejected before an applicant has been given the opportunity to comment.

Ordinary commercial use constitutes use of a trade mark. Failure to use the trade mark for an uninterrupted period of five years (except where the registered owner has legitimate reasons for having failed to do so) will result in the registration being vulnerable to cancellation on the grounds of non-use. It is only in the event of the cancellation action that evidence of use of the trade mark must be filed.

A trade mark which consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the service, or other characteristics of the goods or services, is considered descriptive.

There is no definition of generic in the law but any non-distinctive trade mark shall not be validly registered.

Any aspect of a trade mark that is contrary to morality or offends public policy.

Yes.

Yes, it is possible to register three-dimensional trade marks but there is no other specific reference to unconventional trade marks in the law.

The law provides for protection for well-known trade marks within the meaning of article 6bis of the Paris Convention and article 16 of the Agreement on Trade Related Aspects of Intellectual Property Rights.

Yes, as long as it is distinctive and otherwise qualifies for protection as a trade mark.

A trade mark may not be amended.

OAPI essentially has a deposit system and therefore as long as the formalities are complied with, all trade mark applications are accepted and registered.

Within six months of the date of publication of the registration, any interested party may lodge a notice of opposition with OAPI, containing the opposition grounds. No extension to the opposition term is possible. The registrant will be sent a copy of the notice of opposition and is obliged to file his counterstatement within three months (extendible once for a further period of three months). However, in keeping with OAPI administrative instructions, a further extension of one month may be granted upon application to the director general, failing which the registration shall be considered to be cancelled. A hearing will be held and an appeal against a decision in an opposition proceeding may be lodged with the High Commission of Appeals within six months of the notification of the decision.

When an applicant files a trade mark application in the knowledge that he is not the true owner of the trade mark.

Duration of registration is ten years from the filing date, each indefinitely renewable for periods of ten years. Renewal is to be applied for and the renewal fee paid during the last year of the ten-year term. There is a grace period of six months subject to payment of a fine. Non-payment of the requisite fees within this time will result in the lapse of the registration. The official fee for attending to the renewal of a single registration in one class is €763.

Jointly owned: in OAPI it is possible for two or more persons to jointly own a registered trade mark.

Transfer or assignment: trade marks may be assigned for all or part of the goods or services for which they are registered, and either with or without the goodwill of the business. Assignment is only possible with regard to all member states and assignment of rights in one or more states separately is not possible. An assignment shall be registered, failing which it is regarded as invalid for third parties.

For OAPI the registration of the trade mark confers upon the registered owner the right to prevent all others from using the registered trade mark, or a sign resembling the registered trade mark in such a way as to be likely to mislead the public, for goods or services in respect of which the trade mark is registered, as well as for similar goods or services. Infringement actions may be brought before any competent court in a member state. OAPI has no jurisdiction to hear infringement cases or grant remedies.

Counterfeiting is a criminal offence, whilst also constituting an infringement of a registered trade mark owner's rights. Civil, criminal and customs actions may be instituted depending on the laws of each member state. The procedures and timings also vary from country to country.

Annex VIII of the Agreement revising the Bangui Agreement (February 24 1999) contains specific provisions regarding unfair competition. In particular, the law provides that an act of unfair competition shall be constituted by any act or practice which, in the course of industrial or commercial activities, is contrary to honest practice.

It is unlikely that parody would be considered to be a valid defence in infringement proceedings in OAPI.

Registration of the trade mark does not confer on its owner the right to prohibit a third party from making use in good faith of his name or address, a pseudonym, a geographical name or accurate information concerning the nature, quality, quantity, purpose, value, place of origin or time of production of his goods or rendering of his services, insofar as the use in question is limited to the purpose of mere identification or information and cannot mislead the public as to the source of the goods or services.

Survey evidence is permissible as evidence of reputation, for example when proving that a trade mark is well-known.

Civil infringement proceedings may be introduced in the Magistrates Court where the damages claim is less than Fr10 million ($18,780). If the damages claim exceeds frs10 million then the infringement proceedings should be introduced in the High Court. Appeals are heard firstly by the Court of Appeal and subsequently by the Supreme Court. Counterfeiting is an offence and therefore is regarded as a criminal matter heard initially by the Magistrates Court and thereafter appeals are heard by the Court of Appeal and Supreme Court.

Trade marks are dealt with like any other asset of the individual or company facing bankruptcy.

OAPI is not itself a member of any trade-related conventions; however, all present member states are members of the Paris Convention and the WIPO Convention. None are members of the Madrid Protocol or Agreement.