Singapore Treaty to be in Force for OAPI by Mid-February

Singapore Treaty to be in Force for OAPI by Mid-February

By Afro Ng'ombe   Thursday, December 10, 2015   No comments:

Trademarks and Valentines, a natural pairing.

With all the attention Africa’s been getting globally and our pride’s attention drawn to happenings hitting even close to our hearts, some details have slipped through the grass.  But never fear, like all good lions, we manage a pounce in the end.  This time, this straggling little leo has rounded back on a WIPO announcement from a few weeks ago: OAPI has joined the Singapore Treaty on the Law of Trademarks.  Full WIPO press announcement here.

Administrative Harmonization

The Singapore Treaty on the Law of Trademarks, known as STLT in the WIPO community, seeks to harmonize the administration of trademarks.  It covers everything from registration to license recordation.  It does this by setting limitations on the types of processes and information that can be required by a trademark office.  For example: trademark offices cannot require notarization of application signatures (Article 8(3)(b)); there are 16 pieces of information that trademark offices may require be included in an application (Article 3(1)(a)); and applicants must use the Nice classification system (Article 9).

But License Redecoration Remains

Interestingly, although the purpose of STLT is to harmonize administrative procedures, parties are able to opt out of provisions under certain circumstances (in Article 29), and OAPI has done just that.  Articles 6 and 19(2) will not apply to OAPI.  Article 19(2) of STLT prohibits parties from requiring the recordation of licenses for enforcement.  However, Article 27 of the Bangui Agreement, which governs OAPI, requires the recordation of a trademark license with the OAPI Special Register of Marks in order for the license to be enforceable against third parties.  The pre-existing Bangui Agreement rule stands.
Article 6 of STLT says “Where goods and/or services belonging to several classes of the Nice Classification have been included in one and the same application, such an application shall result in one and the same registration.”  Little Leo has to admit, she’s not really sure what it means to opt out of this.  [And based on the way WIPO presented it in the press release, neither are they.]  Perhaps it means applications listing goods or services in multiple Nice classes will result in multiple registrations.  Conjectures, explanations from wiser readers and wild guesses are welcome.

A Growing Party

The addition of OAPI brings the official number of STLT members to 41.  That number is a little misleading since OAPI itself includes 17 countries.  Seven OAPI members are signatories to STLT, dating back to 2006 and 2007, but only Mali (2009) and Benin (2012) ratified the treaty as individual countries.  The treaty comes into effect for OAPI, and Benin and Mali individually, all on the same day: February 13, 2016.  Just in time for Valentine’s Day.  That will bring the number of countries participating in the STLT harmonization to 54*.  The full list is available from WIPO here.

*If the math doesn’t seem to work out, it’s because there are other multi-state members whose countries are also individually members.

Image information: “Little Debbie Valentine Snack Cakes, 2/2015, by Mike Mozart of TheToyChannel and JeepersMedia on YouTube” CC-BY 2.0 Mike Mozart, available at https://www.flickr.com/photos/jeepersmedia/15908525213

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Ethiopia Enacts Implementing Regulations for Trademark Law

Ethiopia Enacts Implementing Regulations for Trademark Law

By Afro Ng'ombe   Thursday, February 28, 2013   No comments:

 

The current Ethiopian Trademark Law was enacted in 2006.  As is all too common in many countries, it took some time to get the actual implementing regulations into shape.  Now, seven years later, Ethiopia has the tools to enforce its trademark law, at least the legal tools. [Little Leo says perhaps a very adventurous student could use the nice side-by-side Amharic/English trademark law and regulations to learn Amharic.]

Describe by some as an “orthodox regime,” the Ethiopian trademark law covers standard marks – no smells or sounds – for a period of seven years with the option to renew as often as desired.  It’s important to note that if you need to deal with the Trademark Office, everything needs to be done in writing or it won’t count.  ( Regulations, Section 3.)  Applicants have 90 days to make corrections and submit missing pieces of an application before the application is approved for review.  (Section 14.) And, if the application is reviewed and there’s an office action requiring further attention, the applicant again has 90 days to respond.  (Section 19.)  Opposition to published marks must be submitted within 60 days of publication of the notice.  (Section 27.)  The Office is supposed to reply to the opposition within 30 days.  (Section 29.)  

International Considerations

Registration filings can be completed by the mark’s would-be owner or by an agent. But, any agent must be registered as a trademark agent, which requires meeting specific criteria laid out in the second part of Section 51, including residing in Ethiopia.

Previous filings in a Paris Convention member-country can be beneficial for Ethiopian filings. (Section 13.)  Ethiopia is not a member of the Madrid System, AIRPO or OAPI.

Further Information

NJQ & Associates has a nice outline of the key points in the new law in their February newsletter.  And the Ethiopian Law Blog outlines the kinds of marks that are admissible under the current law.  Spoor & Fisher has identified a few areas of the law and implementing regulations that may need further clarification.

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Registry week - global trademark filing stats

Registry week - global trademark filing stats

By Darren Olivier   Friday, November 27, 2009   No comments:

The US Patent and Trade Mark Office recently released its 2009/2010 Annual Report which showed a 13% fall in annual trade mark filings from a record high in 2008/2009. The figures show a decline to 2006 levels. The equivalent report from the European Community Trade Mark Office illustrates that we might expect (they run a calendar year) a 3-5% drop in filings from a record high in 2008. The International Registration (WIPO) figures have not been released although there was mention of a slowdown in March this year in a report on their record filings in 2009. Afro Leo stands to be corrected but the the equivalent trade mark statistics from Cipro show a drop off of between 25% and 35%.

A decline in filings statistics is expected in these economic times. The last time we experienced a similar worldwide fall was in the early 2000s following the dot com crash. What is interesting is the relatively good performance of the European figures against the US figures which also, in Afro Leo's view, are fairly robust given the extent of the crash and the record highs reported in 2008/9. The EU stats can probably be interpreted as another illustration of the success of the paperless OHIM office. The dramatic drop at the South African Office is less easy to explain, especially since South Africa has performed relatively well during this recession. Perhaps it is because the single class filing system used in RSA is more exposed during periods of slow economic activity and/or because the relative strength of the Rand has put a significant strain on US budgets or perhaps it is simply because when the world sneezes RSA stats often come down with the flu, such is a the volatility experienced by developing countries?

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Libya cuts trade mark filing formalities

Libya cuts trade mark filing formalities

By Jeremy   Thursday, June 18, 2009   No comments:

From the current newsletter of NJQ Associates comes information that, from 1 June 2009, the Registrar has issued new regulations for simplifying the filing of trade marks. In particular,

* local legalisation of foreign-originated documents is no longer required. This saves official fees ranging from LD25 to LD120 (around €20 - €80), depending on the country of origin.

* no longer is there any need for a revised and certified translation of such documents. This saves certifying fees of Euro 55 per document.

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