All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Africa: The Gambia set to join the Banjul Protocol on Marks

Sponsored by spoor-fisher-400px.png

Matthew Costard of Spoor & Fisher explains why the Gambia’s ‘British law’ legacy is a cause of concern for ARIPO trademarks

The African Regional Intellectual Property Organisation (ARIPO) is one of Africa’s two regional IP registration systems. ARIPO enables IP owners to get protection for their rights in one or more member countries through a central filing together with a designation of the countries of interest. This is in contrast to the African Intellectual Property Organisation (OAPI), which involves a single filing that automatically covers all the member countries.

The treaty that regulates ARIPO trademarks is the Banjul Protocol on Marks. Eleven countries can be covered through an ARIPO trademark registration (Botswana, Eswatini, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé and Príncipe, Uganda, Tanzania, and Zimbabwe).

On May 4 2021, ARIPO announced that the Gambia will be the 12th trademark member country, and will join the Banjul Protocol on Marks with effect from August 3 2021. What this means is that as of August 3 2021, trademark owners will be able to designate the Gambia in an ARIPO trademark application.

Yet trademark owners should be wary. The Gambia is what is sometimes known as a ‘British law country’. The effect of this is that international treaties do not become part of the Gambian law until such time as they are specifically enacted in local legislation. The Banjul Protocol on Marks has not been incorporated in any legislation in the Gambia, and this means that any designation of the Gambia in an ARIPO trademark application will have no effect. Purported trademark registrations will be open to attack.

It is worth noting that there is a draft law in the Gambia that does incorporate the Banjul Protocol into the Gambian law (An Act to Repeal The Industrial Property Act 2007, see Section 61(13)). It is not known when this will come into effect, although local sources are hopeful that the bill will be tabled at the next sitting of the National Assembly and that it will be enacted before August 3 2021. Until such a time when the draft law is in force, the safest course for trademark owners will be to use the national trademark system.


Matthew CostardDirector, Spoor & FisherE:  



More from across our site

Brand owners bemoan counterfeiters’ latest wheeze and say enforcement authorities should get more involved
Counsel at Bayer, Novartis, a generics company and other firms debate what the WTO’s patent waiver will mean in the short and long term
The patent office report found that stakeholders were still divided over subject matter eligibility but broadly wanted clarity
The UKIPO published the results of its consultation on AI and IP today, June 28, and plans to shake up the rules on copyright and data
IP consultancy Brandit is the first European intellectual property firm to announce plans for an augmented-reality presence
Patent owners and implementers weigh in on the PTAB Reform Act – its provisions, what it missed and its likelihood of success
Counsel from Blackbird, Unified Patents, two other companies and a law firm debate what new ways to avoid Fintiv mean for petitioners and patent owners
Counsel at six companies say experience, technical expertise and persuasion are some of the most important skills at the board
Nokia beats Oppo in Germany; Australia and EPO to continue PPH; Ed Sheeran nets nearly £1m in legal fees; Google backs down in €500m French appeal
Brand owners say Amazon’s new anti-counterfeit team up is welcome but warn that such partnerships are often made on the e-commerce platform’s terms
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree