Bitter battle sparked as OAPI punishes agents protesting Madrid membership 14 Apr 15
The African Intellectual Property Organisation (OAPI) has suspended a number of lawyers and firms from representing clients at OAPI, in a bid to quell “significant tensions” over its recent decision to join the Madrid Protocol. One commentator has told World Trademark Review that the move poses a significant threat to the survival of those firms which specialise only in IP.
The 17 member countries of OAPI officially acceded to the Madrid Protocol in December last year, and the regime came into effect last month. Writing at Afro IP, Cameroon-based IP lawyer Aminou Ndala TITA claims “the accession of OAPI to the Madrid Protocol has not been welcomed by most IP legal practitioners within the OAPI jurisdiction”. This led to in-fighting between OAPI’s director general Paulin Edou Edou and a number of accredited OAPI agents. The latter subsequently formed a group, the ‘Collectif des Conseils en propriété industrielle’ (‘Collective of Industrial Property Counsel’), that has “labelled the OAPI accession to Madrid illegal”, and stated that they are committed to reversing the decision. The collective laid out a number of allegations:
- That OAPI, as an international organisation, does not have the mandate to ratify a treaty on behalf of member states.
- That the Bangui Agreement does not allow the organisation to ratify a treaty through a resolution of its board of directors.
- That only independent states have the power to ratify such a protocol.
- That accession to the Madrid Protocol will have negative economic and strategic impact on member states of OAPI.
- That professional/accredited agents of OAPI will experience a decline in the volume of their work.
In response, OAPI issued a statement arguing that “most of these allegations and conclusions are false” and contended that, as OAPI is responsible for registering trademarks on behalf of its member states, it was legally entitled to join the Madrid Protocol (adding that OAPI member states allowed OAPI to accede to the Madrid Protocol through its competent authority, the board of directors). It also alleges that the collective is the “author of misinformation”, and is merely panicking as its members are losing their “legal monopoly”, arguing “the defence of their interests should not lead to the sacrifice of those of equally legitimate trademark owners and other industrial property rights for which OAPI was established”. The statement ends by outlining the “precautionary measures” it has taken against those members of the 'Collective of Industrial Property Counsel', namely:
- The IP attorneys involved in the campaign, and the firms they are attached to, will not be allowed to represent clients at OAPI for any actions which include, but are not limited to: patent, trademark and design applications, oppositions, appeals and recordals.
- They are also banned from advertising their firms (eg, books, brochures, leaflets and website) as official agent/attorneys of OAPI.
The statement does not confirm how many IP attorneys and associated firms have been barred from representing clients at OAPI. TITA told WTR he has heard that “more than 10 IP agents” have been suspended. While the affected members’ licence to practice as OAPI attorneys has not been withdrawn and they still belong to the Association of Agents of OAPI (AMAOAPI), specific areas of IP activity have been curtailed. It is this, TITA notes, that will hit the wholly IP-focused firms hardest.
For now there is a stalemate and TITA argues that the saga threatens a wider rift between OAPI and local agents: “The OAPI hierarchy has never been known for hasty decisions but this saga has left the impression that the push to join Madrid came from outside, without consultation with key stakeholders within OAPI jurisdictions. Personally I feel there has been very little cooperation between the organisation and agents, who are considered to be very strategic in the functioning of the organisation. The agents feel disrespected as they were not consulted in this process and most were taken by surprised that OAPI chose to join Madrid without any preparation. The organisation did not make any effort to train them on the functioning of the Madrid system and are only doing it now when it’s operational.”
World Trademark Review has contacted numerous figures at OAPI, and also asked WIPO for comment on the ongoing situation. We are awaiting a response from both of them. It certainly looks to be the start of a bitter battle, with TITA noting that the suspended agents “have the capacity to drag OAPI to court or in front of the organisation’s High Commission of Appeal and reverse the decision”. Until then, affected agents and firms are effectively in limbo and will be hoping for a positive and swift resolution.
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