ARIPO – Registered Designs

Africa Regional Intellectual Property Organisation (ARIPO)

Background:

ARIPO formerly ESARIPO (before the reference to English Speaking was dropped) was created as a result of a diplomatic conference held in Zambia in 1976. At a further meeting in Zimbabwe in 1982, the Harare Protocol was adopted in terms of which ARIPO is empowered to grant patents and register industrial designs on behalf of its contracting states.

Membership of International Conventions:

ARIPO is a member of the Paris Convention.

ARIPO Membership:

Membership of ARIPO is open to all Member States of the United Nations Economic Commission for Africa. At the present time, there are seventeen ARIPO states which may be designated in an ARIPO design application, namely: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Seychelles, Sierra Leone, Sudan (but excludes South Sudan), Uganda, Zambia and Zimbabwe.

Even though it is possible to designate Eswatini (formerly Swaziland) and Tanzania (Tanganyika region) in an ARIPO design application, there is no national law in these countries which specifically provides for design protection via ARIPO and there is therefore uncertainty as to whether or not any design protection can be obtained in these countries through an ARIPO design application. A UK registered design automatically extends to these countries but please note that a Registered Community Design does not provide automatic design protection in Eswatini (formerly Swaziland) and Tanzania.

Unlike OAPI, where a single application automatically covers all member states and it is not possible todesignatethe countries of interest, ARIPO applications specifically require the applicant to designate those member States where protection is required. The total of the official fees paid is directly linked to the number of member States so designated. Renewal fees are also directly linked to the number of States designated.

Novelty requirements:

Although it is provided that a designated State may refuse to recognise the registration of a design on the ground that it is not new, there is no definition in the Harare protocol as to the meaning of “new”.

Registrability:

Although there are no specific exclusions in the Harare protocol as to what may form the subject-matter of a design, it is provided that a designated state may refuse to recognise the registration of a design on the ground that such registration is not allowable in terms of the national laws of that member state.

Filing Requirements:

• Power of Attorney (can be late filed)
• Drawings or photographs of design (required on the day of filing)
• Description/statement of novelty (required on the day of filing)
• Priority Document (can be late filed within three months from filing)
• Sworn Translation of Priority Document if not in English (can be late filed within three months from filing)
• Assignment (can be late filed within three months from filing)
• Details of International Classification (can be late filed within three months from filing)

Deferred Publication:

Possible

Substantive Examination:

No

Average Period from Application to Registration:

Twelve to eighteen months

Duration and Renewal:

ARIPO registered designs have the same effect as national registered designs and are governed by the national Design Law of each designated member country.

In terms of the Harare Protocol, the term of an ARIPO design in each designated State, is ten years from the filing date.

However, all of the ARIPO design member countries provide for a fifteen year term or longer. If the national law term conflicts with the Harare Protocol then there may be uncertainty as to the term. ARIPO will not accept annuities after the ten year term but it is unclear whether or not one may pay annuities directly to the designated member countries which provide for longer terms. For example for an ARIPO design which designates Kenya, it is notpossible to extend the term of the design for longer than ten years.

If you require design protection for longer than ten years then we recommend that separate national design applications be filed rather than filing an ARIPO design application and designating the various countries. However, filing separate national design applications will cost considerably more than filing an ARIPO design application.

Renewal fees fall due annually commencing on the first anniversary of the filing date. A six-month grace period, subject to a prescribed fee, is allowed for the late payment of a renewal fee.