Tuesday, 27 May 2014

Tunisia croons, OAPI prepares but Madrid is still questionable in Africa

MIP's Group Editor Emma Barraclough provides some feedback on Tunisia's experience since joining the Madrid System and quotes Maurice Batanga's (OAPI) vision of OAPI acceding by the end of the year. 

According to Emma's note, Tunisia is merry over their 7% growth rate in trade mark filings since joining Madrid whilst OAPI is busy changing forms and updating manuals for its expected accession.

Emma's article entitled "Africa gears up for Madrid" explains why ARIPO, the "english" regional system is unlikely to join as a region because of the similarities it has with the Madrid designation system; it would be more practical for each member state to join Madrid. This writer suggests that this creates doubt on the long term effectiveness of ARIPO for trade marks, if Madrid continues the pace of accession.

For the 17 OAPI member states joining Madrid now seems inevitable. They would rub shoulders with 18 other Africa states who have already acceded. These are Algeria, Botswana, Egypt, Kenya, Ghana, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, and Zambia, with Zimbabwe and South Africa still teetering.

With potentially 70% of Africa forming part of Madrid by year end, it would be easy to conclude that Madrid be the filing destination of choice for brand owners seeking to cover the continent. Unfortunately though, ticking boxes on the WIPO trade mark form needs to be considered very carefully. 

Many of the Registries are simply not up to the task of effectively implementing WIPO procedures or local laws have not domesticated their government's decision to join Madrid. Both shortcomings create doubt on the validity and effectiveness of Madrid filings and it is not uncommon for brand owners to ignore Madrid advantages and file nationally. 

This blogger has had first hand experience of a Zambian trade mark lawyer advising that an international designation of a client covering Zambia was unlikely to be given effect, which then became significant problem because of this Supreme Court decision refusing to recognise user rights in an opposition in Zambia. The result forced the client to consider paying off the infringer. 

Just yesterday, a prominent Kenyan lawyer explained that following Kenya's accession, Madrid filings spiked but because of delays at the Registry dealing with Madrid applications/registrations, the trend has now reversed and national filings are more popular.

Stephen Hollis, an African trade mark guru explains that in countries such as Algeria, Mozambique, Madagascar, Sudan and Sao Tome & Principe and Morocco, the Madrid system may be regarded as more likely to be given effect than in other states - mainly because of their civil law heritage or domestication laws/decisions.

OAPI is one of Africa's more successful registries and hence more likely to be a safe haven for Madrid exponents. However, those expecting to use Madrid for cheap African coverage generally should first take care to properly examine the status of the right in each state before filling out the WIPO form. An alternative is to supplement Madrid filings in key territories with national filings, to hedge against the risk of non recognition of international designations.

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