Beware when using the Madrid Protocol in Africa

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The Madrid Protocol is now in effect in the OAPI member states and Zimbabwe. But there are serious concerns about the validity and enforceability of international registration in these territories. In the case of OAPI, the concerns relate to the fact that the agreement that founded the regional organisation has not been amended to cover international registrations. In the case of Zimbabwe, they relate to an old problem – a common law country must incorporate an international agreement into its domestic law before the international agreement becomes binding.

The Madrid Protocol is back in the news. That is because March 2015 saw the expansion of the international trade mark registration system to two new territories in Africa. On March 5 international registrations (IRs) became an option in OAPI, and on March 11 they became available in Zimbabwe. The African countries and regions that belong to the international registration system are shown on the map. They are:

The accession of OAPI to the Madrid Protocol (as a regional member) is particularly significant. A trade mark owner filing an IR can designate the OAPI region. In the case of Zimbabwe it means that a trade mark owner can now designate Zimbabwe in an IR, instead of designating Zimbabwe in an ARIPO application, or filing a Zimbabwe national application.

These latest accessions should be a cause for celebration. But they are not. Because in both territories there are serious issues regarding the validity and enforceability of IRs. In the case of OAPI it is a very specific issue. In the case of Zimbabwe it is a more general issue, one that exists in a number of other African countries.

OAPI is not a country, of course, it is a regional union that came into existence as a result of an agreement called the Bangui Agreement. The current members of OAPI are: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Comoros.

OAPI joined the Madrid Protocol by way of a Resolution issued by its Administrative Council, the so-called Regulation relating to the Registration of International Registrations. The Administrative Council does not in fact have the authority to create new IP rights (such as an international trade mark registration) on behalf of its member states; such rights can only be created by way of amendment to the OAPI founding document, the Bangui Agreement.

Africa: Madrid System

Some further background is required. The Bangui Agreement, which created the OAPI union, says various things: that member countries will not have their own IP systems; that IP rights are derived exclusively from the Bangui Agreement; and that OAPI will register IP rights on behalf of the member countries. The Bangui Agreement defines the rights that are recognised, and it refers specifically to rights derived from international treaties such as the Paris Convention, the Berne Convention and the Hague Agreement. It makes absolutely no mention of international trade mark registrations or the Madrid Protocol (or the Madrid Agreement for that matter).

OAPI's role is simply to register IP rights for its members. It certainly does not have sovereignty over its member states, and it therefore cannot ratify international IP agreements on their behalf. So the Administrative Council's Resolution does not make the Madrid Protocol binding on the member countries. The member countries are, however, also prohibited from ratifying international IP agreements because of the "waiver" contained in the Bangui Agreement. This means that the only way that the Madrid Protocol can become binding on member countries is for the Bangui Agreement to be amended to make specific reference to the Madrid Protocol and IRs, and for these amendments to be ratified by the national assemblies of the member countries. It is unclear whether this will happen.

OAPI's Administrative Council argues that it has validly acceded to the Madrid Protocol. In support of this it refers to certain articles of the Bangui Agreement. It points, for example, to Article 5, which says that the Administrative Council can take all measures necessary for the application of the administrative procedures arising from the implementation of the international treaties "to which the member states have acceded''. But this is irrelevant because, as the member states are unable to accede to the Madrid Protocol, the Bangui Agreement must still be amended, and this amendment must be ratified by the member countries before the administrative steps can be taken.

The Administrative Council also points to Article 17, which talks of discrepancies between the provisions of the Bangui Agreement and international conventions "to which member states are a party", and how in the case of such discrepancies the international conventions shall apply. But this is again irrelevant, because members cannot be parties to the Madrid Protocol or other IP agreements.

Even if the Administrative Council persists with its view that it was authorised to pass the Resolution in terms of which OAPI acceded to the Madrid Protocol, it cannot hide from the fact that the rights resulting from IRs designating OAPI will not be enforceable in the member countries. Once again, enforceability cannot happen without an amendment to the Bangui Agreement, and ratification of the amendment by the national assemblies.

Some practitioners might feel that it would, in fact, be unconscionable for OAPI to accept application fees for IRs designating OAPI, whilst serious doubts remain as to whether those IRs are enforceable.

The issue of the validity and enforceability of IRs in Africa is closely related to the issue of the enforceability of international treaties and agreements in individual countries.

As discussed below, there are doubts about the validity and enforceability of IRs in common law countries that have failed to incorporate the Madrid Protocol into their domestic law. If IRs that have been filed are, in fact, not valid and enforceable, those countries may even be liable to those who have suffered damage as a result of this.

A distinction needs to be drawn between so-called civil law countries and common law countries. In a civil law country there are no issues with international agreements, as international treaty obligations are seen as being binding on the country without national legislation being required.

The situation is, however, very different in common law countries, which are countries that are part of the Commonwealth, and were once under British rule – they are sometimes also referred to as British law countries. Although Article 26 of the Vienna Convention on the Law of Treaties of 1969 says that "every treaty in force is binding upon the parties to it and must be performed in good faith" – and Article 27 goes on to say that a party may not invoke the provisions of its internal law as justification for its failure to honour its treaty obligations – this does not have the effect that treaties become binding in common law countries on signature. And in the absence of a constitution that sets out the hierarchy between domestic laws, constitutional provisions and international law, the situation might be very confused.

In common law countries there is what is called a dualist approach between international law and domestic (municipal) law. The two systems of law operate independently, and a principle of international law will only have impact on domestic law if it is expressly and specifically transformed into domestic law in terms of the machinery set out in the country's constitutional dispensation. In other words, an international treaty or agreement only becomes part of the domestic law when it is enacted into domestic law by the legislature. This transformation from international to domestic law can be achieved in one of three ways:

• The provisions of the treaty can be contained in an Act.

• The treaty can be included as a schedule to a statute.

• An enabling Act of Parliament can give the executive the power to make a treaty effective by means of a proclamation.

In each case an Act of Parliament is needed. As the court said in the UK case of Maclaine Watson v Department of Trade and Industry (1989) 3 AER 523: "Quite simply, a treaty is not part of English law unless and until it has been incorporated into the law by legislation." This probably explains why there is specific reference to the Madrid Protocol in the UK Trade Marks Act.

How the common law country problem plays itself out in Africa

There are real reasons to be concerned about the validity and enforceability of IRs in the following common law countries: Liberia, Namibia, Sierra Leone, Swaziland, Zambia and Zimbabwe. In each of these countries there is no reference to the Madrid Protocol in the relevant legislation: In Namibia, the current legislation contains no reference to the Madrid Protocol. There is, however, an Industrial Property Act of 2012 that does make provision for IRs. But the 2012 Act is not yet in force. Until it comes into force, there must therefore be doubts. Zimbabwe, which deposited its instrument of accession to the Madrid Protocol on December 11 2014, has not amended its domestic law to give effect to IRs. Until it does so, there must therefore be doubts. In Liberia, the Industrial Property Act of 2003 has never been passed by Parliament, although it was adopted by way of an executive decision of the Industrial Property Office with effect from January 1 2009. The Act contains the suggested WIPO clause which might solve the problem if the Act is passed. There are certain common law countries where the problem of validity and enforceability does not arise. In these countries there is specific reference to IRs in the national legislation. These countries are: Botswana, Ghana, Kenya and Mozambique. It is worth noting that in the case of Ghana this happened very recently, with the Trademarks (Amendment) Act of 2014. Until 2014 Ghana was one of the countries where there were doubts, and doubts remain about IRs obtained in Ghana before 2014 – the country signed up to the Madrid Protocol back in 2008, and there is nothing in the 2014 Act that suggests that it has retrospective effect. There are also certain countries where the problem of validity and enforceability seemingly does not arise because these countries have adopted WIPO's suggestion of incorporating the following wording in their IP legislation: "The provisions of any international treaties to which (country) is a party shall apply to matters dealt with by the (Act) and, in case of conflict with any provisions of this (Act), shall prevail over the latter." These countries are: Lesotho, Rwanda and Sao Tome & Principe. Finally there are certain countries where there are no issues regarding the validity and enforceability of IRs because they are clearly civil law countries: Algeria, Egypt, Madagascar, Morocco, Sudan and Tunisia. Although Egypt and Sudan were for some time regarded as common law countries because of the fact that they were under British rule, the current policies of their registries and courts suggest that IRs are effective and enforceable. Having said that, there is perhaps a slight risk of IRs being challenged in Sudan.

The difficulty arises where a common law country signs an international treaty but then fails to specifically incorporate it into its domestic law. It seems clear that, in the case of a conflict, the domestic law prevails.

In one UK case – R v Secretary of State for the Home Department and Another, ex p Bhajan Singh (1976) QB 198 – Lord Denning said: "The court can and should take the Convention into account...whenever interpreting a statute which affects the rights and liberties of the individual… it is assumed that the Crown, in taking its part in legislation, would do nothing which was in conflict with treaties."

In another case that came before the Scottish courts, however – Kaur v Lord Advocate 1981 SLT 322 – Lord Ross took a very different approach. He said: "If the Convention does not form part of the municipal law, I do not see why the Court should have regard to it at all…it is the Queen in Parliament who legislates and not Her Majesty's government, and the Court does not require to have regard to acts of Her Majesty's government when interpreting the law."

In the Australian case of Minister of State for Immigration and Ethnic Affairs v Ah Hin Teoh FC (1995) 128 ALR 353 the court upheld the traditional theory that a treaty only forms part of Australian law if it has been validly incorporated by statute. It went on to say that the fact that a treaty has not been incorporated into domestic law does not mean that it holds no significance for Australian law. It said that, in the case of ambiguity, courts "should favour that construction which accorded with Australia's obligations under the particular treaty", and that "a statute generally had to be interpreted as far as its language permitted so that it was in conformity and not in conflict with the established rules of international law".

The Australian Minister of Foreign Affairs and Attorney General issued a joint statement after the decision, in which they denied the existence of any legitimate expectation upon the ratification of a treaty. The government also introduced legislation – the Administrative Decisions (Effect of International Instruments) Bill 1995 – which specifically denies that treaties or conventions give rise to a legitimate expectation of how decision makers will make a decision in areas affected by such international agreements.

The growth of the international registration system in Africa is a welcome development although trade mark owners should not overlook the fact that there are serious issues that need to be addressed in a number of the countries that belong to the Madrid Protocol, and certainly in OAPI. Until these problems are addressed, trade mark owners should exercise care.

Wayne Meiring

© Spoor & Fisher 2015. The author is the managing director of the firm's Jersey office