The mechanism of acquiring the right to trademarks on the African continent has its own distinct features due to the heterogenity of the African market, diversity of local cultures and impact of the colonial domination by Western Europe until mid-20th century. This mechanism comprises three procedures that can be used for the protection and enforcement of trademarks in Africa. These procedures are regional, international and national.
Regional procedure for trademark registration
The procedure is implementable via two regional trademark registration systems: OAPI and ARIPO.
African Intellectual Property Organisation (OAPI) trademark
The creation of the African Intellectual Property Organisation was proclaimed by the 1977 Bangui Agreement. OAPI includes 17 states: Benin, Burkina Faso, Cameroon, Chad, the Comoros, Congo, Côte d'Ivoire, Central African Republic, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo.
A peculiarity of the OAPI system is that its members do not have their own national trademark laws, with the exception of the Comoros, and many of them do not even have national intellectual property offices. For this reason the OAPI regional office acts as a single window for trademark applications, examination, registration and certification. Companies may apply to the OAPI directly or via their national competent ministries who pass the applications on to the OAPI office. Foreign applicants, including fr om Belarus, are required to apply to the OAPI headquarters only through OAPI patent attorneys of the following 12 member countries: Benin, Burkina Faso, Cameroon, Congo, Côte d'Ivoire, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, Togo.
OAPI grants trade mark protection on demand. Every application automatically covers all member countries, so designating each and every of them is not necessary. The OAPI trademark certificate is valid and accepted in the territory of all countries of this regional system.
Steps to take for OAPI trademark registration:
1. Filing an application with the OAPI office.
2. Examination of the application on formal grounds: eligibility, document checking, verification of the patent fee payment (5-7 months).
OAPI fees are payable in francs of the African Financial Community (FCFA). Application filing and publication costs 360,000 FCFA for the first class and 75,000 FCFA for each subsequent class, requesting priority costs 75,000 FCFA (1 EUR ≈ 656 FCFA).
At the same time, each trademark is examined for compliance with technical requirements (clarity, visibility, legibility). Applications are also checked against such absolute criteria as:
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compliance of the trademark with public interests, ethics and humanity;
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absence of features misleading the consumer as regards the discription of goods, its origin and manufacturer;
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absence of designations reproducing state symbols of countries, emblems and names of international organisations or similar to them;
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absence of designations that are generally accepted symbols and terms.
In case of denial, the applicant is held to provide within 3 months (which can be extended for further 3 months) reasoned arguments in favour of the registration of the mark.
3. Publication of the trade mark application in the OAPI Bulletin.
Once the application is published, any interested party can lodge an objection (opposition) against the registration within 6 months. The opposition can be based both on absolute and relative grounds (e.g. existence of senior rights of other persons).
A copy of such an opposition is sent to the applicant for response within 3 months, renewable once for 3 months. The respondent’s comments are sent to the opponent. At the parties’ request, OAPI may hear their views before taking a decision.
If there is an opposition, the Office's decision is made on the basis of the opponent’s arguments and the applicant's response. The decision may be either to reject the trademark application, reject the opposition, or register an amended application without some of the goods or services.
The final OAPI decision can be appealed within 60 days to the Higher Appeal Commission, a kind of independent quasi-judicial body, which consists of six lawyers representing the member states of the organisation. OAPI also operates a Mediation and Arbitration Centre.
Applicants from the Republic of Belarus rarely use the regional application procedure at OAPI directly, preferring to register their trademarks with the organisation through the Madrid system for the international registration of trademarks. For example, in 2021 Belarusian applicants registered 3 trademarks with OAPI in 5 ICTU classes, while Russian exporters registered 40 trademarks in a total of 93 ICTU classes.
African Regional Intellectual Property Organisation (ARIPO) trademark.
ARIPO is another regional African organisation active in the area of intellectual property rights protection.
In 1976, an agreement was signed in the Zambian city of Lusaka to establish a regional industrial property organisation. In 1985, the structure was renamed into the African Regional Intellectual Property Organisation. Its members are 22 states: Botswana, Cape Verde, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Seychelles, Somalia, Sudan, Tanzania, Uganda, Zambia and Zimbabwe.
ARIPO's legal framework is based on several protocols relating to inventions, industrial designs, utility models and plant varieties. The organisation's trademark and service mark registration system is laid out in the Banjul Protocol, which entered into force in 1997. It applies only to the 13 ARIPO states: Botswana, Cape Verde, Eswatini, Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, Sao Tome and Principe, Tanzania, Uganda and Zimbabwe.
The ARIPO system, unlike the OAPI one, does not provide for the issuance of a protection document unconditionally accepted by its member states. This is because ARIPO countries have their own national trademark laws and national intellectual property offices. For this reason, an ARIPO trademark may extend to all or part of its state(s) on a case-by-case basis.
According to the Banjul Protocol, registering a trademark with ARIPO includes several steps.
An applicant seeking protection for a trade mark may apply either in one of the States Parties or at the ARIPO office in Harare, Zimbabwe, specifying one or more of the thirteen states wh ere the protection is sought. The applicant without a principal place of residence or business in one of the ARIPO states, must apply through a local representative. Therefore, non-ARIPO applicants, including the Republic of Belarus, must apply directly to the ARIPO office through an attorney registered in one of the thirteen countries of this regional organisation.
If a particular state was not originally designated, but chosen after the application had been filed, a new application should be made with the right designation(s). A state can be included in the original application only if it joined the Banjul Protocol after the application had been filed or registered. This does not apply to states that were already parties to the Banjul Protocol at the time of the original application.
Applications can be sent to ARIPO through online tools, by e-mail, personally or by courier, as well as by registered letter. Once received, the application is subject to eligibility check by the ARIPO Office. If the application meets formal requirements, the Office notifies thereof the applicant and all competent authorities.
The application may be rejected if the technical submission or eligibility criteria are not met. In such a case the applicant may ask the ARIPO Office to review the decision. If the rejection is upheld, the applicant may appeal to the ARIPO Appeals Board or ask for the regional application to be converted into a national one.
Trade mark examination is carried out by each designated country in accordance with national law. It includes the assessment of the distinctive character and the registrability of the trade mark. The examination must be carried out at the national level by each designated state. However, in practice, examination reports are not issued by all thirteen states. If a state does not submit its report to ARIPO, the trademark application must be published and registered in that state after the set deadline by default.
The examination can take up to 9 months, following which the national office issues a decision to register or not register the requested designation. The national office has 1 month to notify the ARIPO office of such a decision. The ARIPO office then registers the rights in respect of countries fr om which no written rejection has been received. In the event of a rejection, the applicant may contest it within 3 months.
Once the national office decides to register the trademark, the ARIPO office publishes its description in the ARIPO Bulletin.
After the publication of the trademark, third parties have 3 months to oppose its registration. If an opposition is filed, ARIPO notifies the applicant and both parties are invited to present their reasoned arguments. The decision of the national patent office is based on the merits of the opposition, and in the case of a successful challenge, the ARIPO regional office rejects or restricts the registration of the trade mark under certain conditions.
In case of rejection, a reasoned appeal can be submitted to the rejecting authority. Disputes concerning the post-registration opposition are dealt with in accordance with the national law of the country concerned.
If there is no opposition or if it is overcome, the trademark is registered and certified by ARIPO. Final registration can be expected within 15-18 months from the date of the application submission, subject to possible delays on the part of ARIPO related to the publication of the application, opposition and certification. The registered mark is published in the ARIPO's official trademark gazette.
A trademark registered with ARIPO has the same legal effect as a trademark issued by any of its states.
ARIPO trademark is initially valid for 10 years from the date of the application, with possible prolongations for the same term.
ARIPO fees are payable in US dollars or local currency equivalent. The application fee is $100, the fee for each designated country is $50 (first class) and $10 (each subsequent class). Registration costs $100 for one class for each designated country and $50 for each additional class. Trademark renewal for the next 10 years costs $100 per country, per class, and $50 for each additional class.
If the application is filed electronically, the fees are reduced by 20%.
The transfer of trademark use rights and licences may be registered with national trademark offices or, if not envisaged by national laws, with ARIPO.
The applicant may designate any other state which subsequently becomes party to the Banjul Protocol or which was not previously designated. A follow-up designation may apply to already registered applications or applications pending registration. In this case, the requested designation becomes a new application in the state concerned and is examined in accordance with the national law of that country. The application date for the territorial extension is the same as the date of an original application for regional registration. Protection in the country of the follow-up designation expires on the same date as for the original registration.
Advantages of the ARIPO and OAPI regional trademark registration for Belarusian applicants:
- national application or registration in one's own country not required;
- a single exclusive legal protection in the territory of all or some (in the case of ARIPO) countries of the regional systems;
- reliable trademark protection in all countries of each of the regional systems thanks to the uniform registration procedure;
- simplified registration.
International trade mark registration procedure
Another tool for trademark protection in Africa is the Madrid System for the international registration of trademarks, administered by the World Intellectual Property Organisation (WIPO).
The Madrid system is a very convenient and cost-effective mechanism for registering and managing trade marks worldwide. By submitting one international trademark application and paying one set of fees, protection can be sought in 131 countries, including 39 countries in Africa.
The Madrid Agreement Concerning the International Registration of Marks of 1891 (Madrid Agreement) and the Protocol to the Madrid Agreement Concerning the International Registration of Marks of 1989 (Madrid Protocol) constitute the Madrid System for the Registration of Trade Marks. The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO IB).
The essence of the Madrid system is one application, one registration, several countries’ protection.
One advantage of the Madrid system is that applications are filed with WIPO in one language (English, French or Spanish) and there is only one state fee payable instead of several different ones. There is no need for patent attorneys in each country, as the WIPO IB itself receives and sends copies of applications to all countries indicated in the application. As a result, one spares attorney, translation and application fees. Another advantage is the possibility for trademark owners to further expand the list of the trademark registration countries, amend the international registration and renew it in all the countries by filing a single application.
The procedure for the international registration of a trade mark includes the following stages:
1. Submitting an application to the Patent Office of the country wh ere the owner already has a valid enterprise, registered trademark or trademark application. For Belarusian applicants, this is the National Centre for Intellectual Property (NCIP).
2. The National Patent Office then forwards the application to the WIPO IB. If the NCIP meets the deadline of 2 months fr om the date of receiving the international application, then this date will be counted as the date of the international registration of the trademark by WIPO.
3. The application must contain information on the original registration or application, the name(s) of the state(s), in which the registration is sought and the list of goods and services to be registered (this list must be the same as the list of goods and/or services indicated in the original registration or application).
4. After receiving the application, the WIPO IB checks its correctness and the conformity of the declared list of goods and services with the list of the International Classification of Goods and Services for the Registration of Marks (ICCM). The WIPO IB then registers the trademark and sends to its owner a certificate with the information entered into the International Register upon registration.
5. Registered marks are published in the WIPO Bulletin, which is published weekly.
6. After examining the application and registering the trademark, the International Bureau of WIPO transmits the application to the national Offices of the countries wh ere the trademark registration is sought.
7. The national offices shall, within 18 months, carry out substantive examination of the application in accordance with their legislation in force.
8. After the examination, the national office of each country concerned reports to the WIPO IB its decision regarding possibile protection of the trademark in its territory.
9. The International Bureau informs the applicant of the new entries made in the International Register following the trademark registration or of preliminary/final rejection(s) by the state(s) concerned, the decisions following such rejections, or of International Register entries related to deregistration, or copies of the entries of amendments.
10. Objections against registration denial should be sent to the patent agent of the country who turned it down or sent a pertinent request.
11. Once the opposition is examined, the Office of the designated country communicates its positive or negative decision to the applicant through the WIPO IB and the decision is recorded in the International Register.
The OAPI regional organisation is generally treated as one country under the Madrid system, so that those seeking trademark protection e.g. in Cameroon, must indicate OAPI itself and not the country of Cameroon.
As of the date of this article, Belarusian exporters have registered a total of 16 trademarks with OAPI as the country of registration under this international procedure. 15 of them are still valid.
Under the Madrid procedure, trademark protection can be obtained in 39 African countries. They include Algeria, Botswana, Cape Verde, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Tunisia, Zambia, Zimbabwe, as well as OAPI countries Benin, Burkina Faso, Cameroon, Chad, Comoros, Congo, Côte d'Ivoire, Central African Republic, Gabon, Equatorial Guinea, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo.
The registration fee under the Madrid system is paid in Swiss francs. Registration of a colour trademark in all 39 African countries under the Madrid system in respect of three ICTU classes is estimated at 5,832.00 Swiss francs and a black-and-white trademark registration in respect of one ICTU class would cost 3,920.00 Swiss francs.
Under the Madrid procedure, the largest number of Belarusian trademarks are registered in Egypt (91), Algeria (43) and Morocco (36). No registrations took place in Mauritius and Capo Verde and only one was accomplished in Malawi.
Overall, the three registration systems (OAPI, ARIPO, WIPO) cover 41 out of 52 national jurisdictions on the African continent.
National procedure for obtaining trade mark protection
Trademark registration in most of the remaining African countries is possible under each country's national procedure. The application process involves the services of a local patent attorney, correspondence in the official language of the trademark registration country and the payment of fees in local currency. Countries of national procedure include Angola, Burundi, Democratic Republic of the Congo, Djibouti, Eritrea, Ethiopia, Nigeria, Seychelles, Somalia, and South Africa.
There are countries that do not have their own trademark offices and legislation, e.g. Somalia and South Sudan. There, marks are registered at the level of trade or industry or justice ministries' trademark offices or services. Alternatively, they can be subject to a ‘reservation’ procedure.
In Somalia, it is not possible to register a trade mark in respect of goods of several classes, but only in respect of one class. Therefore, two or more applications must be filed to protect related trade groups.
South Sudan has no laws governing intellectual property. The Ministry of Justice has issued directives to the officers of the Trademark Service requiring them to follow procedures known as ‘trademark reservation’ pending the enactment of a trademark law. The most intrepid Belarusian exporters can take advantage of this procedure. It is worth noting however, that there are no fees officially set in South Sudan for the “reservation”.
In order to protect their trademarks in these countries, owners resort to the so-called cautionary method by publishing local-language notices in the daily press every 2-3 years as a means of enforcing their rights. It is assumed that South Sudan also follows the trademark cautionary approach.
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