Madrid Protocol comes into effect in 18 African countries

The Madrid Protocol relating to the Madrid Agreement Concerning the International Registration of Marks has come into effect in 18 African countries, providing trademark owners in Africa with potentially faster and cheaper access to international trademark protection.

The World Intellectual Property Organisation announced the accession of the Organisation Africaine de la Propriété Intellectuelle (OAPI) on December 5 2014, with the Madrid Protocol coming into effect on March 5 2015. OAPI consists of 17 countries: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoros, the Republic of Congo, Gabon, Equatorial Guinea, Guinea, Guinea Bissau, the Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

Zimbabwe’s accession was announced shortly after, with the protocol taking effect in that country on March 11 2015.

However, some parties are concerned that international trademarks designating many of those countries are not actually enforceable, as OAPI has not amended its law to give effect to international registrations.

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Counsel comment:

OAPI has yet to amend its law to give effect to international registrations and there is no indication that it intends to do so. The general view is that until such time as the OAPI law is amended, international registrations designating OAPI will not be valid and enforceable. The reason for this is that although the law specifically refers to a number of international arrangements, there is no mention of Madrid whatsoever. It is recommended that trademark owners continue filing OAPI applications until such time as the amendments are made. WIPO appears to be unconcerned with the fact that many countries that sign up to Madrid have not passed the necessary laws giving effect to international registrations.

Wayne Meiring, managing director of Spoor & Fisher Jersey

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