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

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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

Sponsored by

spoor-fisher-400px.png
dan-roizer-gygpfmxgd1o-unsplash.jpg

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: m.costard@spoor.co.uk  

 

 

more from across site and SHARED ros bottom lb

More from across our site

Law firms are rethinking litigation strategies after USPTO director John Squires said he would take control of PTAB challenges
News of Singapore planning to streamline the licensing framework for foreign law firms and a partnership between Avanci and Xprize were also among the top talking points
In major recent developments, the court also ruled on another request concerning access to documents and appointed a new panel to the Court of Appeal
A new foundation in Chile is giving women in the IP community the mentorship, and visibility they’ve long lacked
The EUIPO is keen to stress the benefits of mediation as a means of resolving IP disputes, but do roadblocks remain?
Åsa Gustafson, global patent paralegal manager at Zacco, provides insight into the world of a paralegal, explains how she keeps abreast of legal developments, and reveals a passion for weaving
Alif Gultom and Andrew Diamond of Januar Jahja & Partners explain why Indonesia must adopt reforms against bad-faith filings and safeguard its trademark system for the future
In the third episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss the ‘Women in IP’ network and the current state of diversity within the profession
Practitioners, including two ex USPTO directors, say the Patent Eligibility Restoration Act could restore clarity and predictability to US patent law, though concerns remain
News of an alliance between two Malaysian law firms and the launch of a self-help video aimed at supporting IP professionals through menopause were also among the top talking points
Gift this article