Juletha-Marie Dercksen and Adré Pretorius of Von Seidels examine the application of the Madrid system in OAPI member states.
General background on the Madrid System
The Madrid System for the International Registration of Marks was established and is governed by the Madrid Agreement (concluded in 1891) and the Protocol relating to that Agreement (concluded in 1989). The system enables companies and individuals to protect their trade marks in various jurisdictions by registering an International Registration (IR).
The main benefit of an IR in each designated jurisdiction is that the mark is protected from the filing date of the IR in the same way as if it had been registered at the trade mark office of the relevant jurisdiction.
The Madrid system is convenient, economical and efficient. A trade mark owner can use this system if its home country (which is determined by certain criteria such as domicile or residence) is a member of the Madrid System. It is not obligatory for countries to join the Madrid System, and each country can make its own decision in this regard.
The accession of OAPI to the Madrid System
OAPI is a regional filing system which covers mostly West-African French-speaking countries. OAPI has a unified piece of legislation, namely the Bangui Agreement (i.e. the Agreement Relating to the Creation of an African Intellectual Property Organization, done at Bangui on 2 March 1977), and provides a centralised procedure to secure intellectual property rights in its seventeen member states. There are no national registries in the member states and local filing in a member state is not possible. The Bangui Agreement inter alia provides that member states will not have their own intellectual property systems, that intellectual property rights are derived solely from the Bangui Agreement, and that OAPI will register intellectual property rights on behalf of the member states.
When OAPI initially joined the Madrid System in 2015, there was a lot of uncertainty regarding whether IRs filed in terms of the Madrid System and designating OAPI are enforceable in the OAPI member states. This is due to the fact that OAPI initially joined the Madrid Protocol via a Resolution issued by its Administrative Council, namely the Regulation relating to the Registration of International Registrations. However, the general consensus was that this Resolution of the Administrative Council did not make the Madrid System binding on OAPI member states, and accordingly that IRs would not be enforceable in the OAPI member states. OAPI's task is merely to register intellectual property rights on behalf of its members - it does not have sovereignty over its member states, and therefore cannot ratify international agreements in the name of its member states.
In order to ensure that the Madrid Protocol is binding on the OAPI member states and that IRs are indeed enforceable, two requirements needed to be met: the Bangui Agreement had to be amended to specifically address the matter of the Madrid Protocol and IRs, and these amendments had to be ratified by the national assemblies of the member states.
The Bangui Agreement was amended on 14 December 2015 to make particular reference to the Madrid System and IRs (the revised Agreement and specific Annexes came into force in 2020, and Annexes III, IV and V came into force in 2022). The sections of the amended Agreement that should be noted, are the following:
Article 9(3) Filing and registration of national and international applications: Any international registration of a mark effected in accordance with the provisions of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and including the designation of at least one Member State shall have the effect of a national deposit in each Member State that is also party to the said Agreement.
Article 11(3) Registration, validity and publication of trademarks and service marks, and their effects: The international registration of a mark effected under the provisions of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and having effect in at least one Member State shall produce the same effects in each of the States party to this Agreement and to the Madrid Protocol as if the trademark had been registered with the Organization.
In terms of Article 42 of the Bangui Agreement, the amended Bangui Agreement must eventually be ratified by the national assemblies of all the member states. However, in accordance with Article 41, the amended Bangui Agreement will enter into force two months after the deposit of the instruments of ratification by at least two thirds of the member states. This means that at least twelve of the seventeen OAPI member states must ratify the Agreement before the amended Agreement will become binding on all seventeen OAPI member states.
On 31 October 2019, Cameroon became the 12th member state to ratify the Agreement, resulting in the amened Bangui Agreement now being in force and binding on all seventeen member states. The effect of this is that IRs filed in terms of the Madrid System and designating OAPI should be enforceable in all the OAPI member states. This is a significant change that can simplify the process for obtaining trade mark protection in the seventeen OAPI member states, and also opens up the possibility of registering an IR to individuals and companies in those countries.
It should be noted that there are some commentators that still believe the safest course of action is to file directly at OAPI, and not to utilise the Madrid System, until all seventeen OAPI member states have ratified the amended Bangui Agreement. It is stated that a grey area exists, as not all of the OAPI member states have ratified OAPI’s accession to the Madrid Protocol as of yet. The relevant procedures at the Registry are also still being finalised and Registry staff are being trained in the processing of IR applications.
While these issues cannot be overlooked, we are of the opinion that this grey area should not be overstated as the law as set out in the amended Bangui Agreement seems to be quite clear and the OAPI Registry is positive in its views regarding the implementation of the Madrid System.
Sources:
Beware when using the Madrid Protocol in Africa (Managing Intellectual Property; London): Wayne Meiring, 2015
The Role of Trademarks in International Trade: Evidence from Chinese Exporters in the African Tyre Industry: Yusuke Kuroishi, 2020
OAPI Issue in Africa - Madrid Protocol (3 Supremo Amicus 92): Anuja Naidu, 2018.
Bangui Agreement: A Summary of The Essential Changes: Inês Tavares, 2022
Amendments to OAPI system will shake up the entire registration process: Joana Teixeira, 2020
