OAPI/AIPO
Jun 03, 2024 (Newsletter Issue 5/24)
E-Filing Implemented
The OAPI Registry has confirmed the implementation of its e-filing system on 3 June 2024.
The e-filing system is implemented in respect of trade mark matters, including registrability searches, the filing of applications for registration, renewals, recordals, and oppositions. Company name registrations and objections will also be managed via the e-filing system, moving forward.
Patent matters dol not form part of the initial implementation phase.
Although agents can now file applications electronically via the e-filing system, hard copies of documents, including printouts of digital supporting documents, still need to be submitted manually to the Registry to complete filing formalities.
The implementation of the e-filing system is expected to enhance the efficiency of the OAPI Registry insofar as their handling and processing of trade mark and company name registration matters are concerned.
Source: www.adams.africa
Jan 12, 2023 (Newsletter Issue 1/23)
Accession to Geneva Act of the Lisbon Agreement on Appellations of Origin and GIs
On 15 December 2022, WIPO notified the deposit by the African Intellectual Property Organization (OAPI) of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
The said instrument contained declarations according to which:
- in accordance with Article 28(1)(iii) of the Geneva Act of the Lisbon Agreement, OAPI has been duly authorized, in accordance with its internal procedures, to become party to the Geneva Act of the Lisbon Agreement and declares that, pursuant to the Bangui Agreement Instituting an African Intellectual Property Organization, Act of December 14, 2015, Annex VI, under which regional titles of protection can be obtained in respect of geographical indications, applies;
- OAPI avails itself of the possibility provided for in Article 29(4) of the Geneva Act of the Lisbon Agreement to extend by one year the time limit referred to in Article 15(1) of the Geneva Act of the Lisbon Agreement, and the periods referred to in Article 17 of the Geneva Act of the Lisbon Agreement, in accordance with the procedures specified in the Common Regulations; and
- In accordance with Article 7(4) of the Geneva Act of the Lisbon Agreement, OAPI wants to receive an individual fee to cover its costs of substantive examination of each international registration.
The Geneva Act of the Lisbon Agreement will enter into force with respect to OAPI on 15 March 2023.
Source: www.wipo.int
Jan 27, 2022 (Newsletter Issue 1/22)
Amendments to IP Law Effective
The African Intellectual Property Organization (OAPI) announced that the new OAPI IP laws concerning trademarks, designs, utility models and geographical indications entered into force on January 1, 2022.
Some of the amendments are the following:
- Sound marks and audio-visual signs can now be registered as trademarks.
- Certification marks are registerable.
- Goods and services can now be included in the same trademark application.
- Divisional applications are now possible.
- There will be substantive examination on absolute grounds.
- Trademark applications will be published for opposition before registration.
- The opposition term will be 3 months instead of 6 months.
- The term for filing an appeal against opposition decisions will be 2 months instead of 3 months.
- Filing unregistered trademarks before a court of law after registration is now possible. Previously, such claims could only be filed with OAPI during the objection period following publication.
- Official fees have been amended. Additional trademark class fees are payable for the 2nd and each extra class.
The Bangui Agreement now explicitly refers to International Registrations. There had been doubts about the validity of International Registrations designating OAPI, as the Madrid Protocol was not previously included in the Bangui Agreement. Whether this clarifies the question of validity remains to be seen, as the prevailing opinion is that International Registrations can only become effective in OAPI once all member countries have ratified OAPI's accession to the Madrid Protocol.
Source: www.agip.com; www.spoor.com
Oct 08, 2020 (Newsletter Issue 16/20)IP Cooperation Plan in Africa by AfrIPI EndorsedOn September 7, 2020, AfrIPI held its inaugural Project Steering Committee (PSC) meeting.
The African Regional Intellectual Property Organization (ARIPO), the Organisation Africaine de la Propriété Intellectuelle (OAPI), the African Union Commission (AUC), the European Commission and the EUIPO discussed and approved the AfrIPI overall plan and future activities for next years in Africa.
Among other activities, AfrIPI will:
- support the registration of geographical indications (GIs) in Africa and the EU,
- develop IP guidelines for OAPI and ARIPO member states, and
- train IP examiners on international frameworks (such as The Hague Agreement).
AfrIPI, funded by the European Commission and EUIPO, and managed by EUIPO, aims to strengthen national and regional IP institutions and enforcement systems, while promoting IP benefits to businesses and other economic actors. AfrIPI became fully operational in February 2020. For four years, it will support the African Continental Free Trade Area (AfCFTA) and boost continental economic integration.
For more information, please click here. To learn more about AfrIPI, please check here. Source: www.euipo.europa.eu Sep 24, 2020 (Newsletter Issue 15/20)
Enhanced Participation in TMclass / Joining DesignClass
As of September 14, 2020, the African Intellectual Property Organization (OAPI) has enhanced its participation in TMclass and joined DesignClass.
OAPI will now use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass as well as the list of terms from the harmonised database of product indications (HDBPI) in DesignClass.
Source: www.euipo.europa.eu
Jul 11, 2019 (Newsletter Issue 9/19)African Continental Free Trade Agreement in ForceOn July 7, 2019, the operational phase of the African Continental Free Trade Area has been launched of Heads of State and Government of the African Union. The African Continental Free Trade Agreement (AfCFTA) will be governed by five operational instruments, i.e. the Rules of Origin; the online negotiating forum; the monitoring and elimination of non-tariff barriers; a digital payments system and the African Trade Observatory.
The agreement was adopted and opened for signature on March 21, 2018 and entered into force on May 30, 2019, thirty days after having received the twenty-second instrument of ratification on April 29, 2019, in conformity with legal provisions.
It will be one of the largest free trade areas since the formation of the World Trade Organisation, given Africa’s current population of 1.2 billion people, which is expected to grow to 2.5 billion by 2050, across all 55 member States of the African Union.
For more Information, please check hereSource: www.au.int Feb 28, 2019 (Newsletter Issue 3/19)Changes to System ProposedOAPI proposes changes to the legislation which will affect the OAPI member countries. Two thirds of the OAPI members (12 countries) need to ratify the proposal in order to come into effect. Seven member states have done this so far.
Some of the proposed changes on trademarks are the following:
- The definition of a trademark will be extended to include sounds, music, audio-visual signs and series marks
- Certification marks shall be introduced
- Priority right restoration will be possible
- Trademark applications may be divided
- Substantive examination on absolute grounds to include deceptiveness to origin and genericity
- Trademark application will be published after filing
- Opposition period will be 3 months from publication date
- Claim of ownership’ within 3 months of the publication date of the application
- Cancellation of generic marks possible
- Specific Reference to International Registrations wil be made.
The validity of international registrations designating OAPI however is not yet clear since the Madrid Protocol was never formally incorporated into the Bangui Agreement.
For more information, please For more information, please click hereSource: www.spoor.com, www.oapi.int Oct 30, 2018 (Newsletter Issue 18/18)
Accession to Geneva Act of Lisbon Agreement by Ivory Coast
WIPO informed that the Ivory Coast has accessed to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act of Lisbon Agreement") on September 28, 2018.
The date of entry into force of the Geneva Act of the Lisbon Agreement will be notified when the required number of ratifications or accessions is reached in accordance with Article 29 of the said Treaty.
Source: www.wipo.int
Mar 29, 2018 (Newsletter Issue 6/18)
IP Directorate to Be Divided Soon
OAPI’s Directorate of Intellectual Property is to be split into two separate directorates - one for trademarks and another for patents. This follows a resolution adopted at an OAPI board meeting during December 2017. Official notification is expected soon.
Source: www.spoor.com
May 31, 2017 (Newsletter Issue 10/17)
11th Edition of Nice Classification Adopted
The Trade Marks Registry of the African Intellectual Property Organization (OAPI) announced that from April 30, 2017, all new trade mark applications which are filed at the OAPI Registry, need to conform to the latest edition (11th) of the Nice classification system on the registration of trade marks.
Source: www.adamsadams.com
Apr 26, 2017 (Newsletter Issue 8/17)
Trade Marks Office in Congo Currently Closed
The Intellectual Property Office in the Democratic Republic of Congo (DRC) is currently closed due to political and civil unrest in Kinshasa. An umbrella group of opposition parties, known as the Rassemblement (“Rally”) has called for a general strike, the so-called “Ghost town operation”, to apply pressure on President Joseph Kabila to enter into negotiations surrounding a power-sharing deal and to permit elections to take place later in the year.
It is anticipated that situations of unrest will continue to arise intermittently during the course of the year and leading up to the scheduled elections.
Source: www.adamsadams.com
Dec 08, 2015 (Newsletter Issue 19/15)
Accession to Singapore Treaty
On November 13, 2015, the Director General of WIPO has notified the deposit by the African Intellectual Property Organization (OAPI) of its instrument of accession to the Singapore Treaty on the Law of Trademarks. The said instrument contained the following declarations:
In accordance with Article 29 of the Singapore Treaty:
- "The provisions of Article 6 of the said Treaty will not be applicable to OAPI. According to the said provisions, where goods or services belonging to several classes of the Nice Classification have been included in one and the same application, such an application shall result in one and the same registration.
- The provisions of Article 19(2) of the Treaty will not be applicable to OAPI. OAPI requires the recordal of a license as a condition for any right that the license may have under the provisions of the Bangui Agreement, to join infringement proceedings initiated by the holder or to obtain, by way of such proceedings, damages resulting from an infringement of the mark which is the subject of the license".
The Treaty will enter into force on February 13, 2016.
Source: www.wipo.int
Mar 31, 2015 (Newsletter Issue 5/15)
Fees and Licence Recordal for IR Designating OAPI
1. As provided for by Rule 34(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (“the Common Regulations”), the African Intellectual Property Organization (OAPI) has notified the Director General of the World Intellectual Property Organization (WIPO) that it accepts to collect and forward to the International Bureau of WIPO the fees due under the Madrid Protocol and the Common Regulations.
Pursuant to Rule 35(1) of the Common Regulations, any fees paid to the International Bureau of WIPO should be in Swiss currency, irrespective of the fact that OAPI may have collected such fees in another currency.
2. As provided for by Rule 20bis(6)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (“the Common Regulations”), the African Intellectual Property Organization (OAPI) has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in the territory of its member States.
Consequently, a license relating to an international registration of a mark which has been granted with respect to OAPI shall, in order to have effect in that Contracting Party, be recorded in the Register of OAPI. The formalities required for such recording must be completed directly with OAPI and according to the conditions laid down by the legislation of that Contracting Party.
3. Both notifications entered into force on the date of entry into force of the Madrid Protocol with respect to OAPI, namely, March 5, 2015.
Source: www.wipo.int
Jan 13, 2015 (Newsletter Issue 1/15)
Accession to the Madrid Protocol
On December 5, 2014, the African Intellectual Property Organization (OAPI) deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”). The Madrid Protocol will enter into force, with respect to OAPI, on March 5, 2015.
The said instrument of accession was accompanied by the following declarations:
The declaration referred to in Article 5(2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit;
The declaration referred to in Article 8(7)(a) of the Madrid Protocol, whereby OAPI wishes to receive an individual fee where it is designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration where OAPI has been designated (instead of a share in the revenue produced by the supplementary and complementary fees).
Source: www.wipo.int
May 02, 2013 (Newsletter Issue 6/13)
Comoro Islands Becomes a Member
The African Intellectual Property Organization (OAPI) announced that the Comoro Islands ratified the Bangui Accord on March 25, 2013. Accordingly, the Comoro Islands is now a full member of OAPI.
Since the Comoros Islands has not yet legislated Intellectual Property laws, right holders who seek to protect their rights in the Comoro Islands can only publish a Cautionary Notice. Therefore, all trademarks filed with OAPI on or after March 25, 2013 will be effective in the Comoro Islands.
As for other registrations filed prior to the said date, they will be granted an extension period automatically on their next renewal after March 25, 2013.
By its adherence to the Bangui Accord, the Comoro Islands brings the total number of Member States of OAPI to 17.
The OAPI’s Members now include Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d'Ivoire, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo in addition to Comoro Islands.
Source: www.ag-ip-news.com
The OAPI (or AIPO) states are a union of French speaking African countries.
Once a country joins OAPI, it waives its right to national filing – thus it is not possible to file national trademarks in OAPI member states. For filing purposes, the member states are treated as one state in trademark law However for enforcement / seizure matters, cancellation or invalidation actions filed in the civil court, the procedure pursuant to the national legislation in the member state concerned will be applicable. Even though the member states do not have Trademark specific legislation, some have incorporated penalties for infringement of trademarks in the penal code. Therefore, it is not possible to obtain national registrations in these countries.
Legal basis is the Treaty of Libreville of 1962 (in force since January 1st, 1964) revised by the Bangui Treatment of 1977. In 2015, the Bangui Agreement was revised in Bamako; Annex III on Trademarks entered into force on January 01, 2022.
Existing trademarks can be extended to new member states within 18 months. If the extension application is not filed within the aforementioned timeframe, it can still be done subject to payment of late extension surcharge. Alternatively, the trademark will be automatically extended upon renewal.
OAPI became a member of the Madrid Protocol on 5 March 2015; thus, it is now possible to designate OAPI when filing an international application.
Trademark protection is obtained by registration.
Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
Nice classification, 11th Edition of 2022
(1) Any visible or audible sign used or intended to be used and capable of distinguishing the goods or services of any natural or legal person shall be considered a trademark or service mark.
The following in particular may constitute such a sign:
(a) denominations in all forms such as words, combinations of words, surnames in and of themselves or in a distinctive form, special, arbitrary or fanciful designations, letters, abbreviations and numerals;
(b) figurative signs such as drawings, labels, seals, selvedges, reliefs, holograms, logos, synthesized images; shapes, especially those of the product or its packaging or those characteristic of the service, and arrangements, combinations and shades of colors;
(c) audible signs such as sounds and musical phrases;
(d) audiovisual signs; and
(e) series of signs.
The following trademark types are registrable: trademarks, service marks and collective marks.
The application is filed at the Registry in Yaoundé (Cameroon). It can also be filed at the Liaison offices located in all member states, which transmits the application to the Registry in Yaoundé for examination. The National Liaison Offices do not examine applications or issue certificates.
Multiple-class applications are possible. Under the new administrative Instructions which also came into force on January 01, 2022, it is possible to filed goods and service classes under one application. The base fee covers one class, and each additional class is subject to a surcharge.
Foreign applicants need a local agent.
A simply signed Power of Attorney is required – notarization or legalization is not necessary. The power of attorney must be signed, dated, with the name and title of the signatory inserted.
For each trademark a new power of attorney is necessary. For many trademarks filed on behalf of the same applicant on the same day, a single power of attorney is sufficient.
OAPI carries out both a formal and substantive examination of the application.
(1) For every application for registration of a mark, the Organization shall examine whether the formal conditions, referred to in Article 9 of this Annex, have been met and whether the requisite fees have been paid.
(2) Any filing that does not meet the requirements of Article 3(a), (c), (d) and (e) shall be rejected.
According to Article 3, a mark may not be validly registered if:
(a) it is not distinctive, in particular because it is composed of signs or matter constituting the necessary or genetic designation of the product or its composition;
(c) it is contrary to public policy, morality or the law;
(d) it is liable to mislead the public or business circles, in particular as to the geographical origin, nature or characteristics of the goods or services in question;
(e) 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, save where the competent authority of that State or organization has granted its permission.
The processing time from first filing to registration or first office action is approx. 06 to 09 months.
The publication takes place in two steps: The first is the publication of the trademark application for opposition purposes; the second is the publication of the registration, both in the Official Trademark Gazette.
Division of the applications have been introduced on January 01, 2022:
(1) Any initial application concerning several goods or services may be divided by the applicant or at his request into several applications, called divisional applications:
(a) at least until the decision on the registration of the mark;
(b) during any proceedings for opposition or claim of ownership of the mark; or
(c) during any appellate process concerning the decision on the opposition or the claim of ownership.
(2) The division of the initial application may only concern the list of products and services
covered by the application.
(3) Divisional applications shall retain the filing date of the initial application and, where applicable, the benefit of the right of priority.
National:
The opposition period is 3 months from the publication of the application of the trademark in the Official Gazette.
An appeal against an opposition decision can be filed by the interested party at the High Commission of Appeal within 60 days from the notification of the ruling to the parties.
The High Commission of Appeal is a body responsible for ruling on appeals in review for the decisions issued by the Director General.
Opposition against designation of International Registrations
It is possible to oppose an International Registration – the process is the same as a regional opposition.
The opposition period is 3 months from the publication of the application in the Official Gazette.
An appeal against an opposition decision can be filed by the interested party at the High Commission of Appeal within 60 days from the notification of the ruling to the parties.
The High Commission of Appeal is a body responsible for ruling on appeals in review for the decisions issued by the Director General.
A trademark registration is valid for 10 years from date of application and can be preserved indefinitely through successive renewals every 10 years.
Practical details on grace periods for trademark renewals are available in our publication
here
The official fee for filing a trademark application in one class is XAF 360,000, and XAF 75,000 for each additional class. Where priority is claimed, the official fee of XAF 75,000 is applicable per priority. For collective, certification and co-owned trademarks, the surcharge of XAF 130,000 is applicable for the filing the conditions of use of the collective trademark.
Country Index provides information on the following member states:
SMD Group
thanks the following law firms for their assictance in updating the information provided.
Feb 16, 2022
Nico Halle & Co. Law Firm, Douala, Cameroon
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