Madrid Protocol: Major Developments in Africa
In March 2015 two new African territories joined the Madrid Protocol; Zimbabwe and OAPI. As you know, OAPI is the single-registration IP union that covers much of French-speaking Africa. This is good news on the face of it but in fact it is a cause for considerable concern. Below, we address the two territories separately.
OAPI is the most concerning because OAPI registrations are so significant and so popular. The question that trade mark owners are asking is whether it is safe to abandon OAPI filings and replace them with OAPI designations or extensions of International registrations (IRs). Unfortunately, we think that the answer is no.
The reason for this is that there is considerable concern about how OAPI acceded to the Madrid Protocol. It did so by way of a resolution issued by its Administrative Council. Most IP lawyers who specialise in OAPI matters agree that it was incompetent for the Administrative Council to do this.
Critics point to various issues: that the OAPI regional union was created by way of an agreement between the member states (the Bangui Agreement); that the Bangui Agreement defines exactly which rights are recognised, referring specifically to rights derived from international treaties such as the Berne Convention and the Hague Agreement; that the Bangui Agreement makes no mention of IRs or the Madrid Protocol; and that the Bangui Agreement has not been amended to provide for IRs.
Critics argue that the only way OAPI can lawfully accede to the Madrid Protocol is by way of an amendment to the Bangui Agreement, followed by ratification of that amendment by the legislatures of the member countries. The various arguments are quite complex and IP owners seeking more detail might want to read our article Beware when using the Madrid Protocol in Africa that appeared in the March 2015 issue of Managing Intellectual Property.
A number of lawyers who practise in OAPI countries have been very vocal in their criticisms. These criticisms have certainly had an effect. OAPI has responded by withdrawing the accreditation of these lawyers. It seems very likely that these lawyers - whose livelihoods are at stake - will file a court challenge. If they do, it is possible that the issue of the validity of OAPI’s accession will become an issue that the court needs to consider.
In a further development, WIPO has announced that OAPI has exercised its right to opt out of centralised licence recordal in terms of Rule 20bis (6)(b) of the Common Madrid Regulations - as a result, licences recorded at WIPO will not be effective in OAPI. No explanation for OAPI’s decision accompanied this announcement.
Our advice to clients is not to rely on IRs for OAPI coverage until such time as the accession issue is resolved. Please note that our OAPI office is not affected by OAPI’s withdrawal of accreditation.
The problem that exists in Zimbabwe is one that exists in a number of so-called ‘common law countries’, which is that international agreements like the Madrid Protocol only become effective once they are specifically incorporated into national law by way of statute. This has not happened in Zimbabwe, despite the fact that the Madrid Protocol is already in force. Until such time as legislation is passed that incorporates the Madrid Protocol into Zimbabwean law, there will be very real doubts about the validity and enforceability of IRs in that country. There are similar concerns in Liberia, Namibia, Sierra Leone, Swaziland and Zambia. Summary Clients are advised to refrain from using the Madrid system for OAPI until such time as the issue of the organisation’s accession has been resolved, and for Zimbabwe until appropriate legislation is in force. For further information, please contact your usual Spoor & Fisher Jersey contact or email Wayne Meiring at email@example.com
Clients are advised to refrain from using the Madrid system for OAPI until such time as the issue of the organisation’s accession has been resolved, and for Zimbabwe until appropriate legislation is in force.
For further information, please contact your usual Spoor & Fisher Jersey contact or email Wayne Meiring at firstname.lastname@example.org