The Madrid Protocol’s drawcard is the global protection of trade marks by filing and centrally managing a single international trade mark application for protection in up to 131 countries. This eases the administrative burden of filing, recording changes and renewing trade marks in each member country.

It is, however, a procedural system providing an optional route to secure a national trade mark right. It does not contain substantive provisions regarding the conditions for obtaining protection, the grounds for refusal or the scope of rights in designated member countries. While WIPO examines the international trade mark application for formalities, it must still be examined, and may be protected or refused, according to the laws of each designated member country. Registration in the International Register alone confers no rights, as the procedure for obtaining and enforcing rights, and their scope, is ultimately defined by the national or regional applicable law.

Using the Madrid Protocol appears to be a no brainer for brand owners. However, in Africa, various considerations have an impact on the validity and effectiveness of international registrations. Extending an international registration to some African countries may not be the optimal choice. There are 24 countries/regional organisations out of 54 in Africa that belong to the Madrid Protocol, but any cost saving and perceived advantages may simply not be worth the challenges and uncertainties that are present at grassroots level. The perceived administrative and financial benefits can be outweighed by practical limitations and enforcement uncertainties.

A more strategic approach, combining international registrations with national or regional filings where necessary, is often required to ensure strong protection across the continent.

READ MORE: Ethiopia joins the Paris Convention for the Protection of Industrial Property

Essential requirements for international registrations to be valid and effective

For an international registration to be valid and enforceable in a designated member country, the following key conditions must be met:

  • International registrations should be expressly recognised by domestic legislation. African countries are usually divided between civil law countries, where international treaty obligations are accepted as automatically binding at national level, and common law countries, which require that international treaties are enacted into national law.
  • National IP offices should actively process and examine all Madrid Protocol designations and communicate any objections to WIPO within the strict timelines (12 to 18 months).
  • National IP offices should maintain a unified digital trade mark register containing national and international trade marks.

The effectiveness and efficiency in some jurisdictions remain uncertain, either because the national IP office has not adopted the necessary procedures to implement the protocol, or because of a lack of resources, inadequate training, limited digitisation of records or significant administrative backlogs.

African member countries

At present, Algeria, Botswana, Cape Verde, Egypt, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, Rwanda, São Tomé e Príncipe, Sierra Leone, Sudan, Tunisia, Zambia and Zimbabwe are members, as is the African Intellectual Property Organisation (OAPI).

Some of Africa’s biggest economies, including Angola, Ethiopia, Nigeria, South Africa, Tanzania and Uganda, are not yet members.
On 1 October 2024 Ethiopia’s Council of Ministers approved Ethiopia’s accession to the Madrid Protocol, although the agreement has still to be ratified by the federal parliament. This will involve legislative reforms, and we understand that the Ethiopian Intellectual Property Authority is working on revisions to the current IP law.

As far back as September 2003, South Africa approved the ratification of the Madrid Protocol, but accession has been repeatedly delayed to allow the South African IP office to reduce the period for examination, among other considerations. In October 2024 South Africa’s Parliament’s Portfolio Committee on Trade, Industry and Competition resolved that national legislation will now be amended to allow South Africa to finally accede to and domesticate the Madrid Protocol. The Trade marks Amendment Bill was due to be submitted to the executive authority in February 2025. However, at a meeting held on 22 April 2025, the Department of Trade, Industry and Competition briefed the Portfolio Committee that the bill is now expected to be submitted to the executive authority in September 2025. The process is ongoing, although on a revised timeline.

African countries where international registrations are effective

The Madrid Protocol is fully effective in seven member countries: Algeria, Egypt, Madagascar, Morocco, Mozambique, Rwanda and Sudan. The Madrid Protocol functions effectively only in member countries with modernised laws, fully digitised systems and examination practices that adhere to WIPO’s timelines.

International registrations are not effective everywhere

In the other member countries, the system cannot always be relied upon to secure enforceable trade mark rights. As a firm, we are aware of an increasing number of instances where the owners of international registrations were under the mistaken belief that they had secured enforceable statutory rights, only to learn at a later stage, when enforcement became a priority, that no enforceable rights were stablished on a national level at all. This is due to legislative gaps, lack of procedural implementation or administrative delays within the designated member countries, highlighting the need for local legal guidance when relying on international registrations in Africa.

Although registration of a mark in the International Register may seem to confer immediate protection, it does not, in itself, create enforceable rights in any designated member country. Under Article 4(1)(a) of the Madrid Protocol, an international registration has the same effect as a national application. The protocol sets no timeframe for the final determination of the scope of protection, as this is governed entirely by the national or regional laws of each designated member. While the protocol imposes a strict deadline of 12 months, extendable to 18 months or more in cases of opposition, for notifying a provisional refusal, it does not compel national offices to make a final decision within a specific period. If no refusal is communicated within the prescribed timeframe, protection is tacitly deemed to be granted. However, this tacit acceptance does not prevent later attacks under national law. As such, even if no objections are initially raised, the international registration remains vulnerable to future challenges, reinforcing the critical point that international registration alone does not guarantee enforceable trade mark rights in member countries.

Where enforceability is uncertain, international registration owners should undertake a comprehensive audit of all African international registration designations, especially those that have been tacitly accepted. Further, they should consult with local counsel to verify the status of the international registration at the national IP office concerned and according to the national legislative framework. Local counsel may be able to advise whether any procedural steps can be taken to secure valid and enforceable rights (e.g., publication for opposition purposes, if this has not taken place).

In some cases where the international registration cannot be salvaged by completing due process, the most effective remedy is to file a national application or a regional application, such as through OAPI.

Eswatini, Lesotho, Sierra Leone and Zambia

Eswatini, Lesotho, Sierra Leone and Zambia are so-called ‘common law countries’. An international agreement can become part of the domestic law of a common law country only if the agreement is expressly enacted into the national law by an act of parliament. This has not happened, which means that an international registration cannot be lawfully processed or enforced in any of these countries, and the only reliable protection is by means of a national trade mark registration. In addition, the current practice in these countries is such that international registrations are not processed at all or are an afterthought – proceeding tacitly.

In 2017 a Zambian High Court judgment in Johnson and Johnson v Aardash Pharma Limited implicitly recognised that international registrations have no effect in Zambia, despite the fact that the country has ratified the Madrid Protocol. The judge said that well-known marks are not protected because “Zambia has not yet domesticated the international law” on well-known marks, namely Article 6bis of the Paris Convention and Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property. It would follow that, as Zambia has not domesticated the Madrid Protocol, international registrations are also not recognised in the country. This serves as a warning to brand owners who rely on international registrations in common law countries in Africa that their registrations may very well be unenforceable.

Zambia has passed the Trade marks Bill 2023 to modernise the Trade marks Act. It is not yet clear when the new legislation will come into effect, but some of the significant changes include the provision of service marks and the recognition of the Madrid Protocol. Interestingly, although Zambia’s current act does not make provision for service marks, numerous international registrations covering services designate Zambia, and must therefore be unenforceable in respect of those services. Another inconsistency relates to the renewal term. Under the Madrid Protocol, the term is 10 years, but in Zambia it is seven years from the filing date and every 14years thereafter.

OAPI

OAPI is a regional organisation that covers 17 member countries: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo. There is no territorial designation, and an OAPI registration automatically covers all member countries. There is examination on absolute grounds, but not for prior rights.

OAPI joined the Madrid Protocol with effect from 5 March 2015. At the time, there were no provisions in the Bangui Agreement (the unified law that governs IP rights in OAPI) regarding the protection of international registrations, and they were not valid or effective in OAPI for some years. On 1 January 2022 an amendment to the Bangui Agreement came into force, which provides a legal framework for the registration and enforcement of international registrations in OAPI, although the constitutional basis for this remains open to interpretation. Article 9(3) of the Bangui Agreement states that designations of international registrations “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 that treaty”. This could be seen as suggesting that, when an international registration designates OAPI, it will be valid only in the states that are also members of the Madrid Protocol. At the time of writing, no OAPI member states have joined the Madrid Protocol independently. OAPI has stated that it is authorised to sign IP treaties, such as the Madrid Protocol, on behalf of its member states, but there is a concern that OAPI does not have the power to do this. Having said that, if the validity of an international registration were to be challenged on this basis, then it would seem likely that the courts would agree with OAPI’s position.

International registrations can be challenged in some countries

There are Madrid Protocol member countries where the validity of an international registration designation can be challenged owing to examination issues. These are: Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Namibia, São Tomé e Príncipe, Tunisia and Zimbabwe.

Although there is some examination, the refusal rate is unnaturally low in some of these countries. Between 2020 to 2024, Botswana received 3,839 “total designations in registrations and subsequent designations”, but issued only 244provisional refusals, an average refusal rate of just 6.36%. Similarly, Zimbabwe received 4,955 designations under the Madrid Protocol, but issued only 29 provisional refusals. This resulted in an extremely low average refusal rate of just 0.59% (source: WIPO IP Statistics Data Centre, Madrid System – Designations and Refusals by Contracting Party, Yearly Statistics, 2020-2024, accessed June 2025).

These low figures suggest that international registrations are being accepted with minimal examination or that it is perfunctory, which raises concerns. Lack of examination – or lack of proper examination – may, of course, be a ground for challenging a registration on the basis that it was wrongly accepted, especially in countries where national applications are examined thoroughly.

Issues of a procedural nature

Failure to record limitations

An international registration owner may request a limitation of goods or services in respect of certain designated countries. While the limitation reduces the scope of protection in those designations, the limited goods or services remain listed in the International Register and may be the subject of a subsequent designation. However, in practice, we have encountered issues in jurisdictions such as Botswana, Namibia and Mozambique, where such limitations recorded through WIPO are not being reflected in the national registers. This creates a disconnect between the international and national records, leading to inconsistencies in the scope of protection. As a result, national registers may misleadingly indicate that broader rights than those actually maintained under the international registration exist. This can have significant implications for third parties conducting clearance searches or assessing enforceability. It is therefore prudent for international registration owners to consult local counsel to verify whether the limitation has been formally recognised and recorded at the national level, and to alert WIPO so that corrective steps may be taken.

No statement of grant or publication for opposition

It is not always clear whether an international registration has been granted and is therefore enforceable under national law. Where no statements of grant of protection are issued, it may be difficult to prove registered rights for the purpose of infringement proceedings and filing a complaint with Customs.

Namibia, for example, does not currently issue statements of grant of protection, nor has it historically arranged for the publication of international registrations for opposition. Instead, local trade mark counsel must be appointed to facilitate publication.

A very positive development for Namibia, which is currently undergoing a Madrid Protocol automation process, is the recent announcement by the Namibian registry that it will be issuing statements of grant. International registrations that were accepted and published before the implementation of the automation process (ie, October 2024) will require the resubmission of official documents and copies of publication in order for the statement of grant to be issued.

Following this announcement, the registry also indicated that it would no longer require the appointment of local trade mark counsel to arrange publication of international registrations. WIPO and our firm have engaged with the registry to clarify that the correct procedure under the Madrid Protocol requires the registry to arrange publication automatically.

Despite this clarification, inconsistencies remain. We are intermittently receiving requests from the registry for local counsel to arrange publication. We will continue to raise these instances with the registry as they arise.

It is strongly recommended that international registration owners engage with local counsel to clarify the legal position in each country – specifically, whether:

  • national law recognises Madrid Protocol designations;
  • the national IP office is issuing statements of grant or registration certificates; and
  • the mark has been published for opposition.

If it is established that no such documentation is being issued or recorded at all, international registration owners should seriously consider filing a national application to secure clear and enforceable protection.

Provisional refusals

There are time limits for responding to a provisional refusal. In Namibia, for example, the period is 30 days (extendible to 180 days), whereas in Mozambique it is 30 days, with no extension possible. If the IP office or WIPO delays notification of a provisional refusal, it can make it very difficult for a brand owner to deal with signing a power of attorney and responding properly to the refusal. Extensions of time will be necessary where this is allowed under local laws, which in turn undermines initial cost savings using the protocol. To mitigate this, international registration owners should:

  • implement docketing systems to manage deadlines;
  • act swiftly by engaging with local counsel; and
  • prepare powers of attorney to avoid delays.

In the case of Madagascar, the registry does not have the authority to withdraw a provisional refusal, and it can be overturned only upon appeal to the Court of Appeal, after referral to the Court of First Instance – an expensive and protracted process. In Madagascar, pre-filing trade mark searches are strongly recommended due to the costly nature of the refusal process. Conducting a comprehensive clearance search before filing can help to identify potential obstacles and reduce the risk of refusal. Where risks are identified, it may be more strategic to file a national application with restricted specifications, or to address potential conflicts in advance.

WIPO does not recognise refusals or oppositions submitted late. Some national IP offices refuse marks or allow oppositions outside the applicable time limit (12 months or 18 months), caused by challenges in terms of resources and capacity. This discrepancy can lead to a situation where WIPO’s database shows a mark as ‘registered’, while the national register indicates it as ‘refused’ or ‘under opposition’.

International registration owners should always respond to late notifications and engage directly with the national IP office, even if the deadline under the Madrid Protocol has technically expired. Ignoring such actions may result in loss of rights nationally, particularly where administrative practices are not fully aligned with WIPO procedures.

In summary

The Madrid Protocol has made significant progress in Africa, but its effectiveness and interpretation vary across the continent. While the Madrid Protocol is reliable in African countries with effective participation, a strategic approach is crucial to identify the drawbacks. Brand owners should review their trade mark portfolios in consultation with local counsel to select the best route to registration and determine whether international registrations are suitable and enforceable for each country. We recommend that audits be carried out to determine whether new national or regional trade mark applications are necessary to compensate for any defective or unenforceable international registrations within the portfolio.

This article was first published in World Trademark Review Daily (WTR Daily).