OAPI: IP law update
Martin Chinnery summarises the changes that came into effect this year.
A new IP law governing trade marks, designs, utility models and geographical indications entered into force on 1st January 2022.
It introduced significant changes in the way trade mark applications are processed and registered within the 17 member states of the Organisation Africaine de la Propriété Intellectuelle (OAPI). The changes introduced include the following.
Trade mark definition
The definition of a trade mark has been broadened to “any visible or audible sign … which distinguishes the goods or services of a natural or legal person”.
This means trade marks can now include sounds and musical phrases. The new law also introduces the registration of certification marks.
Examination and opposition
Previously, the OAPI filing system had a formalities examination only. The new law introduces a substantive examination, to include the possibility of refusal on the basis that a trade mark lacks distinctive character or that it may confuse the public regarding the geographical origin or the nature or characteristics of the goods or services.
Furthermore, it is now possible to include goods and service classes in the same application. Previously, separate applications were required, doubling the cost of filing for applicants registering for both goods and services.
Under the previous law, trade marks were published for opposition after registration, with a generous six‑month opposition term.
Now applications will be published for opposition purposes before registration and examination. The opposition term has been reduced to three months, and the term for filing an appeal against opposition decisions has been reduced to two months.
International registrations
OAPI joined the Madrid Protocol in December 2014 and in practice it has been accepting designations of International Registrations (IRs) ever since.
The new law provides the legal framework for the registration and validity of IRs at OAPI. However, the wording of the law is confusing, as it states that designations of IRs “containing the designation of at least one Member State, shall have the effect of a national deposit in each Member State which is also party to that Treaty”.
This suggests that OAPI designations of IRs will only be valid in the OAPI member states that are also member states of the Madrid Protocol, but so far no member state of OAPI has joined the Madrid Protocol independently.
OAPI has addressed this by stating that it is authorised to sign IP‑related treaties, such as the Madrid Protocol, on behalf of its member states.
In the event of the validity of an IR being challenged on the basis that an OAPI member state has not joined the Madrid Protocol in its own right, it is believed that the courts will agree with OAPI’s view.
Unregistered trade marks
While OAPI is a civil‑law jurisdiction, granting trade mark rights to the first to file, in certain circumstances the owners of trade marks that have not been registered can take action against trade marks that conflict with their own.
Oppositions have to be based on a conflicting prior right (or absolute grounds), but it is possible for the owner of an unregistered trade mark to file a “claim of ownership” against an application filed in bad faith on the basis that it was filed “by a person who at the time of filing knew, or should have known, that another person had a prior right to use the said mark”.
Claims of ownership can succeed when the claimant can show use of a trade mark in the OAPI member states prior to the date of the application that is the subject of the claim.
Under the terms of the new law, it is possible for claims of ownership to be filed with the courts after registration.
This will make it easier for genuine brand owners to cancel registrations obtained in bad faith, as they will no longer have to prove that their trade mark is internationally well known within the meaning of Article 6bis of the Paris Convention in order to do so.
One peculiarity of claims of ownership is that they cannot be filed against designations of IRs. It is hoped that this will be rectified in the near future.
Divisional applications
It is possible under the new law to divide applications. Under the old law, the concept was not recognised as there was no substantive examination, so applications were never partially refused.
Co‑ownership
Although trade marks could be registered in the name of more than one applicant under the old law, the new law contains provisions governing the rights and responsibilities of co‑owners, particularly regarding the right to take action for infringement and to grant licences to use a trade mark.
Customs recordals
The new law introduces the possibility of recording trade marks with the customs authorities for the purpose of detaining suspected infringing goods. Very few African countries allow customs recordals, so it is very good news for brand owners that the concept is being introduced in OAPI.
Martin Chinnery is a Chartered Trade Mark Attorney at Lysaght.
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