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

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

By Afro Leo   Tuesday, May 27, 2014   No comments:

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.

OAPI

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.

Read More

Tunisia joins Madrid

Tunisia joins Madrid

By Afro Ng'ombe   Tuesday, October 22, 2013   No comments:

The Protocol, of course.  The country of Tunisia did not simply hop over the Mediterranean and plop down in the center of the Spanish capital, though that is quite an amusing image.

WIPO announced this week that Tunisia has joined the Madrid System for international trademark registrations.  As explained in the WIPO press release, the Madrid System allows a trademark owner to register their mark in many countries around the world with one application, one set of fees (the fees do go up the more countries you add to your list), and one currency (because we all love Swiss Francs).

Tunisia is the fourteenth country from Africa to join the Madrid System.  The most recent prior entry was Rwanda this past August. Perhaps the two most surprising omissions from the list of Madrid Protocol signatories are South Africa and Nigeria, especially since nearly all of South Africa’s neighbors have joined.  (Zimbabwe is the odd one out there.)

Read More

INTA Africa Update

INTA Africa Update

By Afro Ng'ombe   Friday, May 22, 2009   No comments:

Afro-Leo had a special treat yesterday at INTA, a whole session just for him!  The Regional Update: Africa session brought together four very knowledgeable and well spoken African attorneys.  Completing quite the feat, the panel managed to give a decent overview of most of the continent in just over an hour.

The panel gave us a very optimistic view of the future, including improvements in new trademark legislation, steps to implement recent legislative changes and increased enforcement of trademark laws.

Legislative Developments

A number of countries are in the process of changing, or have recently updated, their trademark legislation.  South Africa, Namibia, Djibouti and Rwanda all have new Trademark Acts in the works.  And it looks like Zambia may soon begin working on a new act as a working group has recently formed to begin tackling this task. 

Zimbabwe, Ethiopia, the Gambia, Uganda and Tanzania have recent Acts or amendments to old acts, which those countries are working to implement.  Ethiopia and the Gambia are moving along well in their implementation.  Zimbabwe has more pressing issues at the moment.  Kenya is also working to implement its existing modern legislation.

Special notice was given to Mozambique, perhaps the brightest shining star in African Trademark legislation.  Mozambique is celebrating the 10th anniversary of its Trademark Act.  The act is working well in practice, there are provisions for compliance with the Madrid Protocol and the trademark office has a good staff with a very capable registrar.

EAC

William I. Maema discussed the trademark implications of the forming East African Community.  Kenya, Uganda, Tanzania, Burundi and Rwanda hope to have the EAC common market in place by next year.  This common market will mean harmonization of trademark laws and coordination of enforcement activities.  The EAC countries also plan to introduce specialized anti-counterfeiting police units and training for the area’s customs units.  There is also the potential to introduce mandatory sentencing for counterfeiting crimes.  (Currently, most of the area’s countries have maximum sentences, but no minimums.))

Tanzania’s Two Systems

August Mreme gave specific information regarding Tanzania’s two separate trademark systems.  The existence of two different systems within one country can sometimes take foreigners attempting to do business in Tanzania by surprise.  There are historical reasons for the existence of two systems, relating to the way in which the government was set up when Tanganyika and Zanzibar joined together.

Both systems include recently amended trademark laws.  Tanganyika amended its Merchandise Act in 2008 and Zanzibar introduced its Industrial Property Act the same year.  Tanganyika's Merchandise Act introduced zonal offices around the territory, defined “counterfeit goods,” created a specialized task force comprised of officials from a variety of government agencies, and strengthened enforcement with anton pilar orders, mareva injunctions and new punishments.  Zanzibar’s Industrial Property Act extended protection to non-traditional types of marks such as sound, color and smell.  Service marks and well-known marks are also now protected.  Enforcement measures were increased here as well, with new boarder measures, remedies and injunction possibilities.

Improvements Needed

While optimism is high, there is still much work needed.  In general, many countries have decent legislation but Acts do not have implementing regulations and laws do not have proper enforcements on the ground.  A few countries, most notably Eritrea, Libya and Somalia, are in desperate need of trademark reform.  Unfortunately, countries needing high levels of reform often have much more pressing issues with which to deal more immediately.

Madrid also remains a big sticking point in Africa.  Several brand owners at INTA mentioned that the lack of Madrid compliance in Africa is one of the main reasons they do not attempt to regiser their trademarks there.  The number of countries acceding to Madrid is increasing, but the countries do not always have the matching legislation.

Going Forward

African countries are moving in the right direction.  Many issues still exist, but countries are addressing the issues as able.  OAPI remains a strong player in these improvements.  (Simon Brown described OAPI as an “African beacon – how a regional system should work.”)  But the countries cannot do everything alone.  Brand owners demand enforcement and protection of their marks, yet are reluctant to register their trademarks.  The countries are putting the necessary legislation in place, but the legislation cannot offer protection without the brand owners doing their parts.  As August Mreme explained, if brand owners do not register their marks to protect their brands, counterfeits from the Middle East will destroy their brand image in Africa.

[For those wishing to know more about the panel, the speakers were: Simon Brown of Adams & Adams in South Africa, William I. Maema of Iseme, Kamau & Maema Advocates of Kenya, and August N. Mreme of Mkono & Company Advocates of Tanzania.  The panel was moderated by Gerard du Plessis from Adams & Adams of South Africa.]

Read More

Record year for WIPO filings

Record year for WIPO filings

By Darren Olivier   Friday, February 29, 2008   No comments:

A record 39,945 international trademark applications were received in 2007 by the World Intellectual Property Organization (WIPO) under the Madrid System, representing a 9.5% increase on figures for 2006.

The following African countries are members of the Madrid System: Algeria (A), Botswana (P), Egypt (A), Kenya (A&P), Lesotho (A&P), Liberia (A), Morocco (A&P), Mozambique (A&P), Namibia (A&P), Sierra Leone (A&P), Sudan (A), Swaziland (A&P) and Zambia (P) (*A = Madrid Agreement and *P = Madrid Protocol)

Developing countries, which includes all of the African countries mentioned above, accounted for 2,108 filings in 2007, representing 5.3% of total filings and a remarkable 10.5% growth over 2006. These figures would be boosted significantly if SA were to join the Madrid System.

For the full WIPO press release click here. For information on filings by African based countries using the Community Trade Mark System click here.

Notably, as from September 1, 2008, for states bound by both the Madrid Agreement and the Madrid Protocol, only the provisions of the Protocol will apply.

Read More