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Africa: Zimbabwe provides clarification on Madrid Protocol

Some readers will know that Zimbabwe joined the Madrid Protocol in 2015 (effective date March 11 2015). What they may not know, however, is that Zimbabwe failed to amend its domestic law to give effect to the Madrid Protocol, something that British law (common law) countries such as Zimbabwe do need to do. As a result of this failure to incorporate the Madrid Protocol into national law, there were real doubts about the validity of Zimbabwe's accession to the treaty, and therefore the legality of international registrations (IRs) designating Zimbabwe.

These doubts have now been removed by the Trade Marks (Madrid Protocol) Regulations 2017, which became operational on April 13 2017. It is now quite clear that an IR can lawfully designate Zimbabwe. It is now also clear that the opposition term to a Zimbabwean designation of an IR will run for a period of two months from the date of publication in the Zimbabwe Industrial Property Journal.

This is, of course, very good news. But a word of caution is still required. There is no clarity at this stage as to whether the Registry will be able to meet the 18-month examination term imposed by the Madrid Protocol, a problem that exists in a number of African countries that belong to the international system. If Zimbabwe cannot examine IRs within the required period there will still be doubts as to the validity of IRs that designate the country. Although the Zimbabwean Registry is examining national applications quite quickly, there are serious staff shortages and worrying delays in other aspects of trade mark practice. Whether or not Zimbabwe will be able to comply with its examination requirement may well depend on the volume of IRs designating the country.

Wayne Meiring

Spoor & Fisher Jersey
Africa House, Castle Street
St Helier, Jersey JE4 9TW
Channel Islands
Tel: +44 1534 838000
Fax: +44 1534 838001

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