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ARIPO-ACS39: Proposed Amendments to the Banjul Protocol Approved.

The Banjul Protocol on Marks within the framework of the African Regional Intellectual Property Organization (ARIPO) was adopted by ARIPO member states in 1993 and came into force in 1997. Thus far only 10 of the 19 ARIPO member states have ratified the protocol. These states are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland,Uganda, Tanzania, Zimbabwe and São Tomé and Príncipe. Out of the 10 only Botswana, Liberia and Zimbabwe have actually implemented national legislation to give practical effect to the provisions of the protocol.

In tracking its progress since inception, experts note that it has not performed as well as expected. The reason for this is that the Protocol is not regarded as financially attractive for both users and member states thereby prompting a need to amend the Protocol. Moreover, amendments have also been necessitated by the developments in international trade mark practice.

A working group composed of patent agents, officers from ARIPO member states’ IP offices, government officials and the public at large was set up to study the protocol and make recommendations. The following amendments were proposed and approved:

Fee structure changes

  • The application fee of a mark should be US$ 100 in respect of one mark only and not a series of marks.

  • The inclusion of a US$50 fee for a change of agent.

  • The inclusion of search and extension fees.

Filing Date

  • The allocation of a filing date should only be undertaken after all formalities have been met.

Definition of “mark”

  • The protocol lacked a definition of ‘mark’ which prompted some uncertainty. The following definition was prosed: “A ‘mark’ includes a sign, name, word, device, brand, heading, level signature, letter, numeral or a combination thereof.”

Specification limitation

  • A restriction of 50 words for a description of goods or services have been proposed. The rationale for this is to limit longs specification which causes a cost to the ARIPO office. Should the specification exceed the limitation a fee of US$5 per word for every additional word after the 50th word will be charged

Online automation

  • Provisions to facilitate online filing, online payment and online filing inspection of application were proposed. It was however noted that member states are at different automation levels and therefore may not be willing or able to process electronic applications. In such instances the traditional method of filing shall be accepted. Member states are however urged to equip their offices in preparation for automation.

Form 9 response time limits

  • A two month time limit was proposed for applicants to respond to Form 9. A two month time limit was also proposed for designated states to respond to the applicant’s amendments.

It is hoped that the approval of these proposals will see more ARIPO member states implement national legislation to give practical effect to the protocol.

For more information on the proposals and discussions from the 39th Administrative Council session click on the #ARIPO-ACS39 tag below or for more information on this particular post please contact Naomi Bruwer

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