Proposed changes to the OAPI registration system
In 2019 we announced proposed changes to the OAPI registration system insofar as it relates to trade marks, GIs, patents, utility models and industrial designs.* At that stage, there was no indication when the changes would come into effect.
It has now been announced that the OAPI registration changes affecting trade marks, GIs, utility models and industrial designs will come into effect on 1 January 2022 (there is no mention of patents). Here are some of the most important measures:
Definition of a trade mark: A sound can now be registered as a trade mark, as can an audio-visual sign.
Certification marks: These can now be registered.
Goods and services combined: Goods and services can now be included in the same trade mark application. On 1 March 2022 the authorities announced that certain class headings will no longer be accepted without further clarification. These are: Class 7 Machinery; Class 37 Repair, installation services; Class 40 Treatment of materials; and Class 45 Personal and social services provided by third parties to meet the needs of individuals. The authorities further announced that certain terms will in future require further clarification. These include merchandising items, household items, promotional items, wellness products, retail services, and wholesale services.
Divisional applications: It will be possible to divide a trade mark application according to goods or services at any stage before registration.
Examination: There will be substantive examination on absolute grounds. On 1 March 2022 the authorities announced that the ‘tools’ for substantive examination were being gradually introduced.
Publication: An application will be published after filing.
Opposition: The opposition period will be three months from the publication date.
Claim of Ownership:
A prior user of a mark who feels that the trade mark applicant knew or should have known of its prior rights, will be entitled to file a ‘claim of ownership’ objection within three months of the publication date of the application. Where the decision is in favour of the claimant, OAPI will assign the trade mark application to the claimant.
There have long been doubts about the validity of International Registrations designating OAPI due to the failure to incorporate the Madrid Protocol into the Bangui Agreement. There is now specific reference in the Bangui Agreement to International Registrations – whether or not this resolves the issue of validity remains to be seen, as there is a strong body of opinion that International Registrations cannot be effective in OAPI until such time as all the member countries ratify OAPI’s accession to the Madrid Protocol.
Cancellation of generic marks:
It will be possible to cancel the registration of a trade mark that has, as a result of the actions of the owner of the registration, become generic.
Prescription for infringement: The prescription term for civil actions for infringement will be five years from the date of the infringement.
Customs Watch: The customs authorities will be able to detain suspected counterfeit goods on the written request of the owner or exclusive beneficiary of a trade mark registration. The trade mark owner will have a period of 10 days (three days in the case of perishable goods) from notification of the detention of the goods to launch civil or criminal proceedings.
Find out more about OAPI – Patents.
Geographical Indications (GIs)
Extension: Protection will be extended to agricultural, natural and artisanal products.
Publication/opposition: There will be publication of applications for opposition purposes. The opposition period will be three months.
*OAPI is the single IP registration system that applies in the countries set out below. The system is governed by the Bangui Agreement:
Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.
Contact us for professional assistance regarding your trade marks.