OAPI and national TM issues clarified

March 01 2010

The constitution of OAPI was the 1977 Bangui Agreement. Each OAPI member adopts, as its national IP laws, the detailed provisions set out in the Agreement (OAPI laws). The founder members of OAPI were Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Gabon, Ivory Coast, Mauritania, Niger, Senegal and Togo. Mali acceded in 1984, Guinea in 1990, Guinea-Bissau in 1998 and Equatorial Guinea in 2000.

The tidy OAPI landscape contained islands of uncertainty surrounding the accession of new member states. One was the extension of existing OAPI rights into acceding countries. The other was the fate of existing national registrations in one new member, Guinea. The issues have become clearer but have not been settled beyond doubt.

Extending rights to acceding countries

OAPI laws provided clearly for OAPI registrations, dated after the accession of a new member state, to be effective in the new member's territory. But they originally contained no guidance about the extension of OAPI rights into acceding states.

A Regulation was made on December 4 1998 and supplemented by several resolutions and announcements between 2003 and 2009. Those OAPI Statements provided for extending OAPI registrations, existing on accession of a new member, into the acceding state. There were two phases:

The 1998 Regulation permitted voluntary applications by the owners of OAPI registrations, to extend their effects into acceding territories.
Subsequent OAPI Statements declared that the renewal of an OAPI registration resulted in the automatic extension of its effects into those territories which had joined by the renewal date.

The validity and effects of the OAPI Statements have been extensively debated and we now consider they can be relied on as follows:

Applications for voluntary extension of OAPI rights into acceding members, already duly filed with OAPI and granted by it, are effective.
Every OAPI registration renewed after December 4 1998 is deemed by OAPI to have been extended to all states, being members at the date of renewal. This means that all OAPI registrations now subsisting are deemed to be in force in Mali, Guinea and Guinea-Bissau, which had joined before that date.
Equatorial Guinea did not join until November 23 2000, so OAPI registrations made or renewed before that date are not enforceable in Equatorial Guinea.
Apart from any Equatorial Guinea cases mentioned in (3) above, all extension applications which have been made to OAPI and which are still pending, are superfluous. They can be withdrawn and the official fees are recoverable. They will not be completed by OAPI.

Guinea – effect of accession on existing registrations

After Guinea joined OAPI in 1990, the national registry (Greffe) continued to accept renewals and post-registration transactions affecting existing Guinea registrations.

The OAPI Statements included a provision that existing national registrations were to last only until their next renewal dates. This was ignored by the Guinea authorities and so the renewals of existing Guinea registrations as well as recordals of assignments etc continued.

However, if the OAPI Statements are accepted under OAPI law, applicable in Guinea, Guinea renewals made after December 4 1998 are invalid. No renewal application should now be acceptable. The last subsisting registrations will expire by December 3 2013.

Meanwhile, it is thought that the Greffe has finally stopped issuing certificates of renewal, etc but this is not certain because all communications with the Greffe have been lost.

That bad news is balanced by the good news in that all OAPI registrations now subsisting are deemed to be in force in Guinea. Owners should rely on OAPI registrations for protection in Guinea as well as the other 15 member states. If a registration appears to exist in Guinea and not in OAPI, that situation calls for a serious review.

Guinea – extending existing national registrations to OAPI

The OAPI Statements allow the owners of registrations, subsisting in Guinea when it acceded to OAPI, to apply to OAPI for the effects of those registrations to be extended to the whole of OAPI. A number of extension applications were made, of which some have been completed. The remainder are expected to be finalised by OAPI in due course.