Tim Lince

The continuing tension between the African Intellectual Property Organisation (OAPI) and accredited agents in the region who oppose its recent accession to the Madrid Protocol shows no sign of abating. OAPI’s director of legal affairs has confirmed to WTR that the organisation will not do business with law firms which have employees who disagree with accession to the Madrid Protocol. Meanwhile, opponents of accession have told us that they intend to challenge international trademark applications designating OAPI.

WTR has been reporting on the escalating tension over the past couple of months, which resulted when a group of OAPI agents formed a group, called the ‘Collectif des Conseils en propriété industrielle’ (Collective of Industrial Property Counsel), which claims that OAPI’s accession to the Madrid Protocol is illegal and not compatible with national trademark law. OAPI denies this accusation and has taken firm measures in its reaction to the collective, with one IP adviser, Constantin Ondoa, dismissed from his law firm after alleged pressure from OAPI.

Speaking to WTR, Maurice Batanga, OAPI’s director of legal affairs and cooperation, confirmed its stance, explaining: “If a lawyer comes forward as a member of the collective, our first move will not be to threaten a suspension - we will talk with them about the issues and questions they have and explain it from our perspective. If they leave that meeting and are still against the Madrid Protocol and the accession of OAPI to it, then we must take measures because there cannot be a law firm assisting with international trademark applications for clients who have an employee who fundamentally disagrees with the international trademark system - that is a conflict of interest. We will give that law firm two choices; they dismiss the employee who disagrees with the Madrid Protocol or we remove the law firm from the list of accredited firms when the filer of an international trademarks needs a local law firm. We will also refuse marks that have that law firm listed on the application. We believe the choice is an easy one.”

He confirmed that the organisation had made contact with Ondoa earlier in the year, when the collective first voiced concern about Madrid accession, saying: “From OAPI’s perspective, there are no issues regarding the legality of the Madrid Protocol as the collective is claiming. We contacted [Ondoa] in January and asked for a list of collective members because we want to talk with those members, have a discussion about the issues they have and convince them of the legality of Madrid.”

Reflecting on the above, one of the leaders of the collective (who does not want to be named) was sceptical about OAPI’s reasons for seeking a list of members, saying: “OAPI is not asking for the list to start a dialogue with us, they are doing it to make their task easier in identifying us. They want the list so they can punish lawyers who are part of the collective. If OAPI finds tangible evidence that I am a member of the collective, they will remove my OAPI accreditation. All members of the collective are aware of the risks, as was Constantin [Ondoa] - he barely slept for a month before he was dismissed.”

The collective’s leader stated that the group plans to stay the course, with its possible actions having clear consequences for major brand owners: “We are planning to look for significant international trademarks that designate OAPI filed by well-known brands - companies like Unilever or Danone, for example - and take the mark to court for cancellation. We have a budget to do this and plan to do 10 to 20 of these to set an example. We hope that OAPI or WIPO will pay attention to these actions and reconsider whether Madrid was implemented legally.”

As previously reported, WIPO is aware of the situation but believes it “is a purely internal matter” of OAPI and its agents – though whether an escalation of the matter could change that stance remains to be seen. OAPI is of course aware and remain defiant, with Batanga speaking at two INTA Annual Meeting sessions about OAPI’s accession to Madrid but making no mention of any issues. However, the collective remains steadfast in its views, and its plan to challenge applications from international brands could take things to the next level. 

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