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


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 site and ros bottom lb

More from across our site

The executive director lost a key vote at a meeting of the EUIPO management and budget committee on Tuesday, November 22
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Law firms’ reliance on billable hours is hampering diversity and wellbeing, suggests INTA, but both sides of the profession must club together to enact change
In his first interview in the role, Klaus Grabinski outlines how the UPC will deal with outstanding issues such as potential conflicts and problems with the CMS
Daniel Chew speaks to Managing IP about his plans for the coming year and how UK attorneys can seize the day at the UPC
It’s easy for lawyers to drag their clients to court, but settling disputes amicably could often be a win-win scenario for everyone
Qualcomm’s vice president and legal counsel, John Scott, reflects on the rise of litigation finance and what he wants in private practice lawyers
Klaus Grabinski addressed the controversy over part-time UPC judges in an exclusive interview with Managing IP
Counsel at four US law firms say forming relationships, sending legal updates and demonstrating data have helped them snag a lot of work
Blockchain-related patent applications are on the rise, but could run into Section 101 challenges