Protection of Trade Marks and Service Marks through OAPI
The African Intellectual Property Organization (Organisation Africaine de la Propriété Intellectuelle – OAPI) was formed in terms of the Bangui Agreement which came into effect on 2 March 1977 and revised on 24 February 1999. OAPI’s Bangui Agreement unlike ARIPO Banjul Protocol provides for some aspects of substantive trademark law.
Annex III of the Bangui Agreement provides for substantive and procedural aspects of trademark law, the first part being trademarks and service marks. Protection is provided for trademarks and service marks upon registration and this is for a term of 10 years after which it can be renewed upon payment of the prescribed fee. Such protection extends beyond the goods or services for which the mark is registered and also covers similar goods and services. A mark is defined in
Article 2(1) of Annex III as:
“Any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise shall be considered a trademark or service mark, including in particular surnames by themselves or in a distinctive form, special, arbitrary or fanciful designations, the characteristic form of a product or its packaging, labels, wrappers, emblems, prints, stamps, seals, vignettes, borders, combinations or arrangements of colours, drawings, reliefs, letters, numbers, devices and pseudonyms”.
Article 3 then provides for a mark which are not eligible for registration if:
it is devoid of distinctiveness, notably owing to the fact that it consists of signs or matter constituting the necessary or genetic designation of the product or the composition thereof;
it is identical to a mark that belongs to another owner and is already registered, or the filing or priority date of which is earlier, and which relates to the same or similar goods or services, or where it so resembles such a mark that it is liable to mislead or confuse;
it is contrary to public policy, morality or the law;
it is liable to mislead the public or business circles, notably as to the geographical origin, nature or characteristics of the goods or services in question.
it reproduces, imitates or incorporates armorial bearings, flags or other emblems, the abbreviated name or acronym or an official sign or hallmark indicating control and warranty of a State or intergovernmental organization established by an international convention, except where the competent authority of that State or of that organization has given its permission.
Further, article 6 provides for the protection of well-known marks. The owner of the well-known mark may apply to the court for the invalidation of the effects of the filing of a mark liable to be confused with his own. However, if the mark was filed in good faith, it may not be invalidated after a period of five years has expired following the date of the application. Yet further, the annex provide for both criminal sanctions and civil remedies in the case of infringement.
As mentioned earlier, the Bangui Agreement makes some provisions for some aspects of substantive trademark law as shown above. ARIPO’s Banjul Protocol on the other hand leaves substantive trademark law to national legislation.
*Source: Ncube C B 2015. Intellectual Property Policy, Law and Administration in Africa: Exploring continental and sub-regional co-operation.*
For more information please contact : Oswald Alembong
