Opinion: Lawyers, Trademarks And Intellectual Property In Africa

Opinion: Lawyers, Trademarks And Intellectual Property In Africa

On March 5, 2015, the African Intellectual Property Organization, or OAPI, officially became part of the international trademark registration system (the Madrid Protocol), and it caused quite an uproar.

Trademark attorney Ilse Du Plessis, a director for the lawfirm ENSAfrica, wrote about the issues in Mondaq.

Du Plessis said some lawyers who practice within the OAPI region argue that the accession was invalid, and that OAPI designations of international registrations will not be valid.

OAPI — Organisation Africaine de la Propriété Intellectuelle — is an intellectual property organization headquartered in Yaoundé, Cameroon. The organisation was created by Bangui Agreement of March 2, 1977. The Bangui Agreement was subsequently amended in 1999.

OAPI has 17 member states — mostly French-speaking countries. The official languages of the organisation are French and English.

The OAPI countries are: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.

The Madrid Protocol is an agreement concerning the international registration of trademarks.

The African countries that belong to the Madrid Protocol (other than those that belong to OAPI) are: Algeria, Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

Du Plessis said the argument goes like this: OAPI, which is not a country but simply an intellectual property union that came about by way of an agreement between the member countries, can only make a substantial change like one that allows for the organisation to recognize international trademark registrations via an amendment to its founding document, the Bangui Agreement. This has not happened.

Instead, she said, OAPI administrators “acceded” to the Madrid Protocol by way of a resolution that their council passed called the Regulation Relating to the Registration of International Registrations.

Lawyers who feel that the accession was invalid formed a group called the Collectif des Conseils en propriété industrielle. Their criticisms bothered the OAPI hierarchy so much that it suspended the lawyers involved, and withdrew their right to act in OAPI matters, according to du Plessis.

Du Plessis advised trademark owners to be be cautious. “We think that it would be very risky for any trademark owner to use the Madrid Protocol as a way of getting protection in OAPI at this stage,” she wrote, according to Mondaq.