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| Moyo |
When it comes to trade mark options, ARIPO has not been the success it
ought to have been. In this very useful contribution, Sara Moyo, neatly sets out where we are and
the recommendations of the recently established Working Group, chaired
by Nancy Samuriwo.
Background
The Banjul Protocol on Marks (Banjul Protocol) within the framework of the
African Intellectual Property Organization (ARIPO) was adopted by ARIPO member
states in 1993 and came into force in 1997. Membership of the Protocol is open
to any state which is a member of ARIPO. It is also available to any state
which is a member of the African Union or the United Nations Economic
Commission for Africa.
Unlike the Harare Protocol on Patents, Industrial Designs and Utility
Models which came into force in 1984, has 17 member states and is linked to the
Patent Cooperation Treaty, the Banjul Protocol has 9 member states only.
Under-performance
The Banjul Protocol has perennially under performed. The total number of
trademark applications filed under the Banjul Protocol since the Protocol came
into force is less than 2 000. Of this number 22% are applications filed by
Applicants within ARIPO member states whilst 29% are filed by Applicants based
in African countries that are not members of ARIPO. The remainder of trademark
applications are filed by Applicants outside Africa.
To date trademark registrations
under the Banjul Protocol number less 800. Of these 14% have been registered in
favour of Applicants within the ARIPO member states. 9% are registered in
favour of Applicants based in African
countries that are not contracting states to ARIPO. The remainder are
registered in favour of Applicants outside the continent.
In contrast, the Harare Protocol has since its inception, received in
excess of 6 000 patent applications (excluding industrial designs and utility
models) and has registered in excess of 2 000 patents.
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| Dos Santos - ARIPO DG |
In addition whilst ARIPO member states have domesticated the Harare
Protocol, only 5 of the contracting members of the Banjul Protocol have done
so.
Working Group Established
ARIPO recently convened a meeting
of intellectual property (IP) stakeholders at Harare to discuss proposals for
making the Banjul Protocol on Marks more attractive to users and to contracting
states. The meeting was held as a follow up to the first meeting held on 21
March 2013, and was also aimed at putting together a formal Working Group
structure that is mandated to discuss and submit concrete proposals to the
Technical Committee of ARIPO for the improvement of the Banjul Protocol.
Whilst invitation to the meeting was extended to ARIPO member states, IP
agents within member states and other IP stakeholders, participants at the
ARIPO meeting were delegates from the ARIPO member states of Liberia, Malawi,
Tanzania, Zambia and Zimbabwe, and IP agents in attendance were from Uganda and
Zimbabwe.
Ms Nancy Samuriwo
of Gill Godlonton & Gerrans (Zimbabwe) was elected Chairperson of the
Working Group and Ms Loy Mhando of the Business Registrations and Licensing Agency
(Tanzania) was elected Vice Chairperson.
Recommendations
The deliberations of the meeting included:
1. The recommendation to ARIPO to embark on a membership drive for the Banjul
Protocol and to encourage contracting states to make legal provision for the
enforcement of Banjul marks under their national laws. Presently only 9 of the
17 ARIPO member states are party to the Banjul Protocol and only 5 contracting states
have domesticated the Banjul Protocol. These are Botswana, Liberia, Namibia,
Uganda and Zimbabwe.
2. The recommendation to
ARIPO to undertake users’ meetings and
exhibitions so as to market the Banjul Protocol to users, member states and
prospective contracting parties.
3. The
recommendation that ARIPO undertake a review of its fee structure under the
Banjul Protocol as this is in certain instances a barrier to membership of the
Protocol.
4. The recommendation that ARIPO consider reducing the period for
substantive examination of Banjul marks from 12 months to 9 months so as to
shorten the period from filing to registration – more so as the majority of Banjul
member states do not, owing to technical and capacity constraints, issue
substantive examination reports.
5. It was noted that a
number of ARIPO member states are party to the Madrid System or are in the
process of joining the System and that there is a need to investigate the possibility
of linking the Banjul Protocol with the Madrid System.
This article was written by Sara Moyo.
This article was written by Sara Moyo.
