Tim Lince

Tension continues to escalate between the African Intellectual Property Organisation (OAPI) and a number of accredited agents over OAPI’s recent accession to the Madrid Protocol. World Trademark Review has talked with key figures from both sides of the dispute, including an IP adviser who claims that he was dismissed from his law firm after alleged pressure from OAPI.

As reported on Tuesday, OAPI last week released a statement regarding the formation of the Collectif des Conseils en propriété industrielle (Collective of Industrial Property Counsel), a group of agents who claim the organisation’s accession to the Madrid Protocol is illegal and aim to reverse the decision. The statement confirmed that OAPI will not allow members and law firms directly associated with the collective to represent clients at OAPI for any actions which include, but are not limited to, patent, trademark and design applications, oppositions, appeals and recordals - a move described as a “precautionary measure”. The collective has since issued a response, labelling the threat to suspend accredited agents as “illegal, shameful and unworthy of OAPI”. They add that they plan to take to local courts to challenge OAPI-designated international trademark registrations and plan to publish a “practical guide” on how such actions can be undertaken.

Following our previous post, WTR learned that a lawyer, Constantin Ondoa, was dismissed from his role as an OAPI-accredited IP adviser at Cameroon-based law firm Jing & Partners, effective from April 13. Ondoa is the public spokesperson for the collective, and the only individual who has come out publicly as a member of the group. It is understood that figures from OAPI told Jing & Partners that his continued presence in the firm would result in the loss of its OAPI accreditation. During a meeting held between OAPI legal staff and the firm, the audio of which has been obtained by WTR, founder and barrister Paul Jing attempted to convince OAPI staff that Ondoa should be free to express himself. However, a follow-up letter sent to OAPI a few weeks later, and seen by WTR, confirmed Ondoa’s “dismissal” and that the firm “disclaims liability for any acts performed by him purported to be done as part of [the] office”.

At the time of posting this blog, Jing & Partners had not responded to WTR’s requests for comment on the matter. For his part, Ondoa is keen to stress that he continues to have a positive relationship with his former employer and that he blames OAPI for what has happened: “I lost a job and find myself unemployed for giving a legal opinion on a question of law. [Jing & Partners] had a choice between keeping me in the workforce or to suspend or dismiss me. I worked in their office for six years and I'm not in a psychological condition to bring actions against them because I fully understand their position. But, unfortunately, I have to suffer injustice and abuse of authority on the part of the leaders of OAPI. This is traumatic for me because I have a family to feed, and now I find myself without any income and have to survive with aid and limited financial support from members of the collective. However, I remain very serene and this fight will go on. I am more determined than ever to continue this fight until the force of law prevails.”

So far Ondoa is the only member of the collective to be so targeted following alleged pressure from OAPI. However, he claims that other law firms have been contacted by OAPI and “expects in the coming days the publication by OAPI of new sanctions against officers suspected of belonging to the collective”.

When contacted by WTR, OAPI confirmed that investigations are underway to identify further members of the collective. Maurice Batanga, director of legal affairs and cooperation, stated: “OAPI decided to suspend collaboration on international registrations of trademarks with firms where there are members of the campaign against accession to the Madrid Protocol. Only one person has yet been identified [Constantin Ondoa]. Investigations are ongoing to find out if the firms of our agents are involved. The information concerning them will be published in due time.”

Given this escalation, the collective is calling on WIPO to take an active role in mediating the situation. WTR spoke with the leader of the collective (on condition of anonymity), who told us that the group is calling on WIPO to:

  1. publicly release an official position about the situation;
  2. consider the illegality of the process of OAPI’s accession and, for now, suspend its membership;
  3. be aware that some items of the Madrid Protocol are contrary to the OAPI Agreement, and to invite members of the collective and OAPI staff together to analyse how Madrid can be implemented within OAPI’s current legal framework and identify whether laws need to be modified;
  4. ask OAPI to use “diplomatic methods rather than dictatorial methods”.

The leader of the collective added: “We are not against the Madrid Protocol, but against the violation of the law in order to adhere to it. Since the creation of OAPI, this is the first time that this institution is facing such a contradiction... [The whole situation] is a real shame because freedom of expression and opinion is recognised by national and international laws. Yet agents cannot speak out because they are afraid of being suspended.”

From WIPO’s perspective, the dispute is not one that it feels it is in a position to intervene in. David Muls, senior director of the Madrid Registry at WIPO, told WTR: “The manner in which OAPI acceded to the Madrid Protocol is a purely internal matter between OAPI and its member states. However, we have to put the matter in perspective. This is not the first time that claims have been made that a Madrid Protocol accession is invalid. In Latin America, for example, there were lawsuits in Mexico and Colombia that went all the way up to the countries’ constitutional courts and were ultimately rejected.”

Muls staunchly denied any suggestions that WIPO put any pressure on OAPI to accede to the Madrid Protocol, stating that this has “no basis in fact”. He added that WIPO “has an excellent working relationship with OAPI”. He is also confident that the stand-off between OAPI and the collective will have no effect on negotiations with other countries seeking to accede to Madrid.

Without a mediating force, the dispute is likely ultimately to hinge on the legal nuances. In the meantime, both sides remain entrenched in their positions and the conflict is set to worsen. 


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