Tim Lince

The controversy over the African Intellectual Property Organisation’s (OAPI) recent accession to the Madrid Protocol continues to develop, with the group of agents who claim accession is illegal calling on INTA for support. However, the association has told World Trademark Review that  it is not in a position to become involved in the legality of a country’s or intergovernmental organisation’s accession to the Madrid Protocol.

As we have reported over the past month, a group of OAPI agents, calling themselves the ‘Collectif des Conseils en propriété industrielle’ (Collective of Industrial Property Counsel), are staunchly against OAPI’s implementation of the Madrid Protocol, which came into effect in March this year, claiming that the association does not have the mandate to ratify a treaty on behalf of its 17 member states. While not a member of the collective, Wayne Meiring, managing director of Spoor & Fisher Jersey, tells World Trademark Review that he is “generally in agreement with the view that the current law does not authorise OAPI to join Madrid”, adding: “In particular, the Administrative Council does not have the authority to create new intellectual property rights. Such rights can only be created by amendment of the Bangui Agreement.”

OAPI denies these claims, stating that it has the authority to sign up to Madrid, and has publicly declared that it is searching for collective members to convince them of this (and if opponents remain unconvinced, OAPI has confirmed that it will give law firms a choice between dismissing the employee who disagrees with the Madrid Protocol or having the firm removed from the list of accredited firms it provides when filers of international trademarks need local representation). So far, one member of the collective, spokesman and lawyer Constantin Ondoa, has been dismissed from his law firm on the basis of his opposition to OAPI’s accession.

This week Ondoa spoke to World Trademark Review about the personal toll that his dismissal has taken: “We live in a different socio-economic context in Cameroon and you have to search long and hard before finding another stable job, especially one at the level I held before my dismissal. Meanwhile, family expenses accumulate and it has become increasingly difficult to bear. At present, I am being forced to sell my car to cut costs and complete the payment of my schooling doctoral thesis. For OAPI, this is a victory; I serve as an example for anyone else who would dare oppose this institution in the future.”

In a bid to garner support for its cause, the collective has written to international IP associations, including INTA, but has yet to receive any response. Ondoa feels they are being “ignored”, and comments: “We believe that INTA should raise awareness on the dangers of the accession of OAPI to the Madrid Protocol for users of the system. It is unacceptable that it remains silent on the issue. How can it be that such an important association for trademark agents has not taken an official position so far? How are we to understand this silence? In this regard, we believe that INTA has breached its obligation to protect and defend the users of different trademark systems around the world.”

INTA, for its part, remains silent no more. A spokesperson told World Trademark Review: “INTA is not in a position to become involved in the legality of a country’s or intergovernmental organisation’s accession to the Madrid Protocol and defers to WIPO, the potential new member and the court of jurisdiction on that question.”

However, the spokesperson was adamant that OAPI’s accession is a positive development, saying: “INTA does support OAPI’s accession to the Madrid System as the harmonised international application and renewal procedures reduce costs and other burdens on domestic and international trademark owners. INTA also has a group of experts ready to assist OAPI, and other new members of the Madrid System, in the implementation of the Protocol.”

The political manoeuvring around this issue will no doubt continue, with the collective threatening to challenge international trademark applications designating OAPI, but it seems clear that the courts remain the ultimate likely arbiter of this bitter dispute. 

Comments

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RE: INTA offers assistance to OAPI as anti-Madrid agents decry lack of support

Interestingly no one remembers that the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks is affiliated to the Madrid Agreement Concerning the International Registration of Marks (1979). As we use "protocol", "agreement", "convention" or "treaty", one can easily assume they are the same entity in international law but with different names. That is quite a lack of knowledge in international law, as they are distinct in objectives and well as in substance. Apparently I do not see any impediment for any entity joining a Protocol, but I would be very surprised if an entity ( private or not), which does not translate in sovereignty as a State, signing and ratifying a treaty.

Ana Penteado, on 28 May 2015 @ 14:25

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