African storms: controversy delays new dawn of IP protection
The recent accession of 17 African countries to the Madrid Protocol has proved unexpectedly contentious and cast doubt on the enforceability of some international marks. We speak with the figures involved in the dispute and consider how brand owners can best protect their marks in the continent
The prospect of joining the Madrid Protocol is often met with a degree of resistance from local trademark practitioners, concerned about the potential impact on filing instructions; but seldom do they end up fearing for their very livelihoods. Yet this is exactly the scenario playing out in Africa, where an acrimonious dispute over the African Intellectual Property Organisation’s (OAPI) recent accession has already cost one lawyer his job and could ultimately compromise the protection of brands across the region.
The Madrid Protocol was established in 1989 with the aim of creating a truly global system for international trademark registrations. Today, the system encompasses some 95 members – a number which is growing every year. Emerging markets have increasingly become a focus, with 19 African jurisdictions (comprising 36 countries in total) signing up, predominantly over the last decade. And this trend looks set to continue, as Algeria, Gambia, Malawi and South Africa continue making preparations to join in the next couple of years.
Most of the existing African members were brought into the fold in one fell swoop when OAPI – the Cameroon-headquartered IP organisation responsible for registering trademarks on behalf of its 17 mainly Francophone member states – acceded to the protocol in March this year. When OAPI’s imminent accession was first announced in December 2014, Vanessa Halle, director of IP for Nico Halle & Co in Douala, hailed it as “the dawn of a new day for IP protection in Africa”.
But the move did not evoke such unqualified enthusiasm in all corners. Shortly after the announcement, a group of six OAPI-accredited lawyers in Cameroon got together to debate the positives and negatives of the introduction of Madrid in the region. Alarm bells started ringing as they realised that OAPI’s forthcoming accession may in fact be illegal. The group banded together as the Collective of Industrial Property Counsel to issue a public letter online setting out their case.
The collective’s primary argument is that, under the Bangui Agreement that led to the creation of OAPI in 1977, the organisation does not have the mandate to sign treaties on behalf of member states. The Bangui Agreement thus needs to be amended for accession to the protocol to be legal, and for international trademarks in the OAPI territory to be enforceable. In publishing its letter, the collective sought to warn agents and rights holders of the risks of filing for protection under Madrid while these irregularities remain; and ultimately to convince the World Intellectual Property Organisation (WIPO) either to suspend OAPI’s membership of Madrid or to force it to make the necessary revisions to ensure that the protocol is implemented legally.
The response to this letter was swift and severe, taking the form of a strongly worded statement on the OAPI website that categorically refuted the collective’s assertions. OAPI maintained that “most of the allegations and conclusions made by the agents are false”, denouncing the collective as the “authors of misinformation”. It insisted that it had a valid mandate to join Madrid, claiming that the Bangui Agreement gives it responsibility for trademark registrations “in the name and on behalf of all member states”. It further pointed out that it is not the first supranational organisation to sign up to the protocol: the Office for Harmonisation in the Internal Market (OHIM) successfully acceded in 2004.
Perhaps more troublingly, OAPI also announced its intention to take “precautionary measures” against the collective by preventing associated agents from representing clients for any IP-related work before it. “Members of the collective must look elsewhere to carry on with the development of the profession of an agent,” the statement concluded. “For its part, OAPI is always ready to support them especially by means of information and training. It shall not maintain any working relationship with any IP adviser or agent who acts against the decisions and guidelines agreed upon by [OAPI], especially with regards to the accession to the Madrid Protocol.”
Just days after this statement was posted, OAPI made good on its threats. Constantin Ondoa is the only member of the collective to be publicly named thus far and is officially recognised as the group’s spokesperson. Until recently, he worked as an OAPI-accredited IP adviser at Cameroon-based law firm Jing & Partners, assisting national and international clients with the registration, renewal and enforcement of trademark rights. In March, Ondoa was called into a meeting with staff from the firm and officials from OAPI’s legal department. It is understood (from a recording of the meeting obtained by World Trademark Review) that Jing & Partners was given the choice of dismissing Ondoa or losing its OAPI accreditation – a death knell for any IP-focused firm in the region.
A few weeks after the meeting, OAPI received a letter from Jing & Partners to confirm that Ondoa was no longer with the firm. In its letter the firm attempted to distance itself from its erstwhile employee, asserting that it “disclaims liability for any acts performed by him purported to be done as part of [the] office”. Founder Paul T Jing has refused to comment on the decision.
Speaking to World Trademark Review a few days later, Ondoa was clearly distressed at the sudden turn of events. “I lost my job and find myself unemployed for giving a legal opinion on a question of law. This is traumatic for me because I have a family to feed; and now I find myself without any income and having to survive with aid and limited financial support from members of the collective. However, this fight will go on,” he vowed.
The collective’s next salvo came a month later, when it informed World Trademark Review of its plans to challenge “10 to 20” international registrations designating OAPI. The campaign will target high-profile brands such as those owned by Danone and Unilever. The first lawsuits are expected to be launched once international designations are submitted to OAPI for examination in the coming months. The collective hopes that this provocative move will “lead to OAPI or WIPO paying attention to these actions and thereafter reconsidering whether Madrid was implemented legally”.
While the collective has grown considerably since the original six members joined forces in January, all have become “increasingly silent” in the wake of Ondoa’s dismissal, because “they have interests to protect at OAPI” such as pending applications and other proceedings. With nothing left to lose, however, Ondoa – speaking together with the leader of the collective, who understandably wishes to remain anonymous – is vocal in condemning OAPI’s draconian response to their arguments, suggesting that it reveals a disturbing side to the organisation.
“Freedom of expression and opinion is recognised by national and international laws, so wanting to muzzle members of the collective through threats and intimidation reveals a very Machiavellian attitude,” they say. “The simple fact is that OAPI should have amended the Bangui Agreement before implementing Madrid – it’s like putting the cart before the horse. The collective is fighting for the very principle of this issue: that joining the Madrid Protocol too quickly and not ensuring it was implemented legally is simply not fair. It is not fair to lawyers and it is not fair to companies that believe it has been implemented correctly and end up with unenforceable trademarks.”
They roundly reject OAPI’s allegation that the collective is fundamentally opposed to Madrid: “In fact, for many members of the collective, the Madrid Protocol will be good for us – it will bring us more litigation, and litigation offers more financial reward than simply filing applications. With Madrid, if you are a good lawyer, what you lose in application filing work you gain in litigation. We are not afraid of Madrid; we just believe strong in the need to implement it properly and legally.”
But perhaps their harshest words are reserved for WIPO, which in their eyes is responsible for the whole imbroglio. “Outrageous, irresponsible and regrettable”, is their verdict on its response to the situation thus far. “WIPO has an obligation to provide users with a reliable system that meets all the legal guarantees,” they add. “So if and when errors are found to have been made by OAPI in its implementation of Madrid, it automatically engages the responsibility of WIPO. That may therefore mean both OAPI and WIPO are complicit in actions that greatly mislead users of the Madrid System.”
Wanting to muzzle members of the collective through threats and intimidation reveals a very Machiavellian attitude
Meanwhile, OAPI is unwavering in its insistence that accession to the Madrid Protocol was wholly legal. “The issue with the collective is rooted in misunderstanding,” claims Maurice Batanga, director of legal affairs and cooperation. “They believe it was the director general of OAPI who decided to join the Madrid Protocol; but the truth is officials from all 17 of our member states came together and agreed to join.”
Batanga goes on to refer to the provisions of the Bangui Agreement governing international agreements and Article 14 of the Madrid Protocol, which lists the requirements for accession. “There was and there is no need for the member states to amend the legislation before OAPI acceded to the Madrid Protocol,” he concludes. “From OAPI’s perspective, there are no issues regarding the legality of the Madrid Protocol as this group is claiming. If members of the collective are in good faith, they will be convinced.”
African countries on course to join Madrid
Malawi looks set to become the next African nation to sign up to the Madrid System. WIPO says that “legislative preparations are underway” and is confident that “2015 is a real possibility” for accession.
However, these preparations are more complicated than WIPO would suggest, claims Tisu Makato, a senior state advocate at the Ministry of Justice and Constitutional Affairs in Malawi. He confirms that legislation is being drawn up by the Malawi Law Commission, but warns that “it isn’t realistic to say Madrid could be implemented by the end of 2015”, given that the draft is still at the early Law Commission stage. From there, it needs to be discussed and approved by the Cabinet and subsequently debated in Parliament. This process “can take years”, he explains.
And timing is not the only issue. “I do not think the IP office is ready for Madrid,” admits Makato frankly. “There will need to be funding to make changes to be able to implement Madrid and the associated requirements of it, and I doubt funding will be found.”
That said, Makato is confident that if these obstacles are overcome, the protocol “will help Malawi” in the long run and improve the trademark system for local agents and international counsel alike.
WIPO has tipped Gambia as another country that is close to joining Madrid: “The process is on track and accession could be forthcoming in either 2015 or 2016.” It is understood that Parliament has approved the bill of accession; the next step is to revise the Trademark Act to ensure it is Madrid compatible.
Here again, however, Spoor & Fisher managing director Wayne Meiring stresses the need for transformative change at the registry if there is any hope that Madrid will be successfully implemented: “There are currently severe delays at the Gambian registry which makes it very unlikely that international designations will be examined at all, or certainly within the 12/18 month deadline.”
South Africa’s long-awaited accession to the Madrid Protocol may finally be nearing fruition. WIPO believes that the country should be in a position to accede by “around 2017”, although several obstacles still need to be overcome.
While Parliament has already given the green light to joining, the instrument of accession remains outstanding. The government is also in the process of preparing a National IP Policy, which will include a framework for the Madrid Protocol. Once this has been finalised – expected to occur in the next 12 months – it will need to be implemented by way of legal amendments, a process that will also take some time.
Thus far there have been “no adverse reactions” to news of accession from the South African legal community, according to Adams & Adams partner Simon Brown: “The general feeling is that trademark practitioners will deal with it appropriately and the South African government seems determined to make the country’s accession a success. They are doing this by forming working groups, ensuring that the registry is ready for the operational amendments necessary and that the registry is equipped to handle any procedural issues which can be onerous on a receiving office.”
Algeria’s accession, expected in 2016 or 2017, will mark a milestone for WIPO: the country is currently the only nation in the world that is a member of the Madrid Agreement, but not of the Madrid Protocol. Senior director of the Madrid Registry David Muls says that adoption of the protocol will end the dual system, calling this “a welcome simplification”.
“We have been looking forward to Algeria joining the Protocol for a number of years,” he adds. “The presidential decree acceding to the protocol was published in the country’s Official Gazette in April, which is a major step forward. We now await the instrument of accession – we don’t know yet when this will reach us.”
Once this happens, the transition should progress smoothly, suggests Meiring: “I think there should be few problems with Algeria’s accession to the protocol. It is a civil law country, so no specific legislation will be necessary; and they are already geared to handle international applications and appear to be doing so properly.”
Looking beyond 2017, Nigeria may be another candidate for accession further down the line. WIPO confirms that it is “in touch with the competent authorities”, although it is understood that talks are at a very early stage.
Bolaji Olowofoyeku, managing partner at Bolaji Olowofoyeku & Co in Lagos, is confident that the country is “ready and capable to adopt the Madrid system of filing marks”. “If the Nigerian registry can manage the online filing system effectively, as it currently can for national marks, then I see no reason why it cannot manage filings under the Madrid Protocol system. There are, of course, well-documented disadvantages with the Madrid System but I believe the advantages outweigh them,” he adds.
There have been issues with other international treaties in Nigeria: for example, although Nigeria acceded to the Patent Cooperation Treaty (PCT) in 2005, this has not yet been passed into law. Likewise the Paris Convention – although agents can still file priority applications at the trademark registry.
“I am going to approach the implementation of the Madrid Protocol as an optimist and say that Nigeria will face little challenges in implementing the Madrid system as long as everyone involved stays committed,” concludes Olowofoyeku. “I cannot speak for other legal practitioners, but I believe it is about time for Nigeria to fully implement the global trends in intellectual property while protecting our national interests.”
For those who remain unpersuaded, the consequences that Batanga spells out may be grave: “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 local representation. We will also refuse marks that have that law firm listed on the application. We believe the choice is an easy one.”
Batanga also suggests that the lack of wider support for the collective’s cause is proof positive of the veracity of OAPI’s position: “I am aware that the collective has written to WIPO, INTA, the heads of the 17 OAPI member states, the 17 ministers of the members states who took the decision of accession on behalf of their respective governments and many other personalities in OAPI members states. We are not aware of any positive replies and I am assured that there is no single member state that is against the accession of OAPI to the Madrid Protocol.”
Storm in a teacup…
Batanga is correct in his assertion that WIPO has so far declined to get involved; when approached for comment, one spokesperson insisted that “the manner in which OAPI acceded to the Madrid Protocol is a purely internal matter between OAPI and its member states”. In fact, senior director of the Madrid Registry David Muls would go so far as to suggest that the crisis should soon fizzle out: “It is not atypical that, during the early phase of a Madrid accession, some agents who conduct business in respect of the territory concerned take the view that it is better to continue using the national route. This view tends to change as time passes and the advantages of the Madrid System are better understood. Each country has to decide for itself whether accession is in its interest and what legal process needs to be followed. As users experience that the system works well, we believe the current controversy will settle down.”
Muls also maintains there is evidence of “traction” since OAPI’s accession, revealing that it has received “more than 150 designations” of international trademarks since the Madrid Protocol came into effect in March. However, he would not venture an opinion on whether those marks are actually enforceable.
The International Trademark Association (INTA) likewise refuses to be drawn into the dispute, stressing that is “not in a position to become involved in the legality of a country’s or intergovernmental organisation’s accession to the Madrid Protocol”. Like WIPO, it seems determined to paint a rosy picture of the situation: “We support OAPI’s [membership to Madrid] as the harmonised international application and renewal procedures reduce costs and other burdens on domestic and international trademark owners. INTA has a group of experts ready to assist OAPI, and other new members of the Madrid System, in the implementation of the Protocol.”
…Or pinch of salt?
But the question marks that still hover over the legality of accession mean that the response on the ground is rather more sceptical. For example, international law firm Spoor & Fisher claims on its website that “most IP lawyers who specialise in OAPI matters agree” that the accession process was invalid, and is advising clients not to file or rely on international registrations when seeking protection in the jurisdiction. Other IP heavyweights such as ENSAfrica advocate a similar policy.
Wayne Meiring, a South African attorney and managing director of Spoor & Fisher Jersey, is “generally in agreement with the view that the current law does not authorise OAPI to join Madrid”, and predicts that a legal challenge to accession has a “reasonable chance of success”. He goes on to reveal that while the factual matrix in the OAPI jurisdiction may be “unique”, the enforceability of internationals marks is in fact a common problem across the wider continent.
“There have been two main problems experienced by a number of African countries which have signed up to the Madrid Protocol,” explains Meiring. “Many have not passed the necessary laws in order to give effect to international registrations designating their countries; or their registries do not have the capacity or the ability to process international registrations properly. WIPO does not seem to feel obliged to ensure that each country has put the necessary legislation in place, or indeed to follow up to see if the system is managed properly.”
Simon Brown, a partner at Adams & Adams in South Africa, is likewise critical of Madrid’s implementation across Africa: “Most territories that have acceded have handled the adoption of new laws, the amendment of existing laws, the implementation of procedures and the enabling of regulations rather poorly. Even in territories where the trademark laws have been amended, there remain practical and logistical challenges facing the registry when processing international registrations.” Countries that sources red flag include Ghana, Liberia, Namibia, Sierra Leone, Sudan, Swaziland, Zambia and Zimbabwe.
Kenya – a Madrid success story
One of WIPO’s biggest African success stories is Kenya, where the Madrid Protocol has been in force since 1998.
Richard Omwela, a partner at Hamilton Harrison & Mathews in Nairobi, reports that the system is “highly regarded and has been positively embraced by the trademark players in Kenya”.
In fact, so trusted is the system that Omwela suggests – unusually – that brand owners can rely on it as their sole means of protection: “Some applicants often register national registrations in addition to international registrations, but we advise that it is unnecessary to incur expenses by seeking a supplementary national registration in Kenya where an approved international registration designating Kenya exists.”
The new regime has also proved a boon for the Kenya Industrial Property Institute (KIPI). WIPO partnered with the Kenyan government to help fund and equip KIPI, including upgrading its IT capabilities and providing technical assistance and training for staff. Omwela was effusive in his praise for its enhanced capabilities: “KIPI has been able to adopt best practices from more developed and advanced trademarks registries from across the world, which its staff have had opportunities to visit. The training that the KIPI staff have received abroad has gone a long way in making them adept at handling applications, and also improving efficiency and accountability at the trademarks registry.”
Peter Kamero, associate advocate at MMC Arches in Nairobi, also points out that the regime has also been advantageous for the economy as a whole: “It has made Kenya more attractive as a business hub for international companies that wish to set up regional offices.”
For those seeking to safeguard their marks in Africa, it is a frustrating situation. In a continent where the enforceability of national trademarks is wildly erratic, a reliable international system would provide considerable comfort to brand owners; but as it stands, the enforceability of international trademarks appears just as problematic in many jurisdictions. Meiring emphasises the urgent need for WIPO to push for legislative change: “You would think that it would be far more beneficial to the Madrid System if WIPO took a more proactive role in making sure that all relevant parties and legal experts in the prospective member countries are consulted and that the necessary laws are passed and infrastructure is in place to administer the system as it was intended. I think there is also insufficient dialogue with lawyers within each country or a full consideration of the implications of Madrid.”
That said, while WIPO may thus far have proved reluctant to intervene in the OAPI situation, it has been lobbying other governments to upgrade their regimes to meet the Madrid standards – efforts which are now beginning to bear fruit. Ghana, for example, has recently adopted Madrid-compatible trademark legislation that is close to resolving the current enforceability issues. In Namibia, an IP Amendment Act has been approved and similar steps are also underway in Liberia. In Zimbabwe, where Madrid came into force in March this year, revisions to the Trademarks Act will be adopted by the Zimbabwe National Assembly and Senate by the end of July.
In the meantime, Meiring would urge caution when seeking to file international trademarks in Africa: “In all those countries where the necessary laws have not been passed, counsel should be advising their clients to file national or regional (in the case of OAPI) applications.” But the progress being made suggests that this may yet turn out to be the darkest hour before the promised new IP dawn.