Trademark Law in the African Intellectual Property Organization (OAPI) Jurisdiction under the Bangui Agreement of March 2, 1977 Revised on February 24, 1999

By Ferdinand Doh Galabe

The legal and institutional framework for trademark law and practice in the AIPO jurisdiction is Annex III of the “Agreement revising the Bangui Agreement of March 2, 1977, on the creation of an African Intellectual Property Organization”, signed at Bangui (the political capital of Central African Republic) on February, 24^th 1999 (hereinafter known as the Bangui Agreement).

The OAPI comprises of seventeen (17) member states namely: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo-Brazzaville, Cote d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo, and Comoros Islands the seventeenth member State which joined AIPO in March 2013.

One of the main advantages of this Organization is that any filing effected with the Organisation covers all the seventeen (17) member States.

First to file/first to use

The general rule pertaining to the ownership of a trademark as laid down by Article 5 of Annex III of the Bangui Agreement is to the effect that the ownership of a mark shall vest in the person who files it first. Registration of trademarks in use is therefore very crucial in the OAPI jurisdiction and the party who overlooks the importance of registration does it at his own risk and peril. The better you protect your IP rights the easier it tends to be to enforce it.

Nevertheless, the same Article 5 is also protective of the rights of those who have a prior right to use a mark. Therefore, where a mark has been filed by a person who, at the time of the filing, knew or should have known that another person had a prior right to use the said trademark, the first to use may file a claim of ownership of the mark with the OAPI within six (06) months following the publication of the record of the first filing.  Following inter partes proceedings before the Commission, the Commission shall rule on the claim of ownership. The prior usage of the trademark can only be evidenced by written or printed matter or documents contemporaneous with the facts that they seek to establish.

Definition of Trademark/Service Mark

According to Article 2, Annex III of the Bangui Agreement, the following are recognized as trademarks and service marks; “any visible signs used or intended to be used and capable of distinguishing the goods or services of any enterprise…,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 colors, drawings, reliefs, letters, numbers, devices, and pseudonyms.”

Collective marks are trademarks or service marks, according to Article 2 above, which may be used only by enterprises of public character, unions or groups of unions, associations, groups of producers, manufacturers, craftsmen or tradesmen who possess legal personality.

The conditions for their use are laid down in rules approved by the competent authority.

Well Known Marks/ Defensive Trademarks

Well known marks are determined as such following circumstantial evidence adduced by the party seeking to establish their marks as well known. Such information may include, but may not be limited to:

1) The degree of knowledge or recognition of the mark in the relevant sector of the Public;

2) The duration, extent and geographical area of any use of the mark;

3) The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

4) The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;

5) The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;

6) The value associated with the mark.

The Bangui Agreement does not specifically define the legal status of owners of a well-known mark, but refers to Article 6bis of the Paris Convention for the Protection of Industrial Property, and Article 16 paragraphs 2 and 3 of the TRIPS Agreement.

Article 6bis of the Paris Convention for the Protection of Industrial Property, provides that, “(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested. (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.”

The owner of a well-known mark may apply to the court of one of the member States for the invalidation on the national territory of one of the member States, of the effects of the filing of a mark liable to be confused with his own.

The owner of a well-known mark cannot bring an action against a bona fide applicant after a period of five (5) years has lapsed since the latter’s application.

The TRIPS Agreement is a treaty that stipulates minimum requirements for trademark protection. Article 16 paragraphs 2 and 3 of the TRIPS Agreement provide that member states of IP jurisdictions may recognize trademark rights to well-known marks on the basis of use alone.

A defensive trademark can be applied for by a trademark owner of a well-known trademark for goods or services that the owner does not intend to use. Defensive trademarks are filed to reduce the possibility of other traders using the trade mark for unrelated goods or services. One characteristic of Defensive Trademarks is that they cannot be struck off for non-use.

The Bangui Agreement does not make mention of Defensive Trademarks. We should however note that Article 23 of the Bangui Agreement states that “At the request of any interested party, the court may order the cancellation of any registered mark which, for an uninterrupted period of five years prior to the request, has not been used on the national territory of one of the member states, except where the registered owner has legitimate reasons for having failed to use it. Cancellation may be extended to all or part of the goods or services for which the said mark was registered.”

We therefore see that with a Defensive Trademark, the owner can file for goods or services that they do not intend to use. Whereas according to the Bangui Agreement, when you file a Trademark it must be used on the national territory of one of the Member States, or risk having the trademark cancelled either in whole or part of the goods or services for which the said mark was registered.

Absolute grounds for Refusal

According to Article 3 of Annex III of the Bangui Agreement, there are four absolute grounds upon which a trademark application may be rejected. They are as follows:

• It is devoid of distinctiveness, e.g., a computer company whose purported trademark is a computer device or logo. The trademark application of the same company will be valid if it were an apple logo;
• It is contrary to public policy, morality or the law;
• It is liable to mislead the public or business circles, especially as to the geographical origin, nature or the 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.

We might also note that applications for registration which do not respect conditions of form (filing procedures and requirements such as the POA, and priority documents if priority is claimed) shall not mature.

Normally, a three (3) month period is granted for the applicant to regularize following official notification by AIPO. This period might be extended by thirty (30) days in cases of proven necessity at the applicant’s behest. A six months period is generally awarded to file priority documents. Where such discrepancies are not attended to within this deadline, the application is purely and simply rejected.

Included in the particulars of filing is the mandatory proof of payment document, failing which the application shall not be acceptable.

Rejection is pronounced by the Director General of OAPI. If an application is rejected by the organization, the applicant has sixty (60) days to lodge an appeal against the decision at the High Commission of Appeal.

Relative grounds for Refusal

• It resembles another mark to the point that it is liable to create confusion or mislead or it is identical to an already registered trademark or the filing or priority date of which is earlier, and which relate to the same goods or services (see Nice Classification);
• It reproduces, imitates or incorporates official emblems, acronyms or signs or hallmarks indicating control or warranty of a State or intergovernmental organization established by an international convention, except the latter has given its permission.

Note that oppositions to trademarks are not initiated by OAPI. OAPI simply examines applications to ensure that the form/ procedures laid down have been respected, application fees have been paid, and relevant documents duly forwarded. Interested parties are guardians and watchdogs of their Intellectual Property (IP) rights and are expected to enforce their rights against third party infringement through court action or by the competent OAPI organs. They possess, according to Article 7 (2), the exclusive rights to prevent third party infringement.

Infringement

Exclusive ownership of a mark and effects thereof vest in the individual who has duly filed for registration in accordance with Article 8, Annex III of the Bangui Agreement (which relates to filing requirements and procedures).

Registration of a mark likewise confers on the owner the exclusive right to prevent all third parties from making use in business without his consent, of identical or similar signs for goods or services that are themselves similar to those for which the trademark or service mark has been registered where such use is liable to cause confusion. Note that where an identical sign is used for identical goods and services, a risk of confusion shall be presumed to exist.

As such, the owner of a mark enjoys exclusive rights to bring an action or institute civil and criminal proceedings against third party infringement. Beneficiaries of an exclusive right of use may also bring an action if the owner fails to act having been called upon to do so.

Civil Action for the infringement of a mark shall be brought by the owner thereof. However, the beneficiary of an exclusive right of use may bring an infringement action, unless otherwise provided in the contract, if the owner fails to act after having been called upon to do so.

Any action for infringement of a subsequently registered mark whose use has been tolerated for three (03) years shall be inadmissible except where it has been filed for registration in bad faith (foreclosure by tolerance). The inadmissibility of the action shall be confined to those goods and services for which the use was tolerated.

The following constitute an infringing act:

• Bad faith application of a prior registered right belonging to the trademark owner (conflict with a prior right);
• Those who fraudulently affix on their goods or on objects traded by them of a mark belonging to another;
• Use of identical or similar signs, for goods or services that are themselves similar, which are liable to cause confusion. The onus is on the defendant to rebut this presumption;
• Unlawful exploitation of a registered trademark;
• Fraudulent imitation of a mark in such a manner as to mislead the buyer;
• Use of a fraudulently imitated mark;
• Intentional sale or offer for sale, or provision of goods or services under counterfeit or fraudulent marks;
• Intentional sale or offer for sale of goods or services bearing a fraudulently imitated mark or information liable to mislead the buyer as to the nature of the goods;
• Intentional provision or offer of goods or services under marks which have been fraudulently imitated, affixed, counterfeited or bearing information liable to mislead the buyer as to the nature of the goods;
• Use of a mark bearing information liable to mislead the buyer as to the nature of the goods;
• Sale or offer for sale of goods bearing a collective mark unlawfully used;
• Intentional use of invalidated collective marks or marks reproducing or imitating invalidated collective marks within a period of ten (10) years following the date of invalidation.

These actions shall be brought before the civil courts and judged as summary proceedings.

Exceptions to Infringement

These are generally the result of negligence on the part of the trademark owner to steward his mark faithfully. They include:

• Third parties who start to use a mark after expiration of registration (trademark owner’s failure to renew after ten years) shall have the right to continue such use even after the trademark owner has successfully effected late renewal or restoration as the case may be;
• Inadmissibility of action for infringement of a subsequently registered mark whose use has been tolerated for three (3) years, except such a mark was filed in bad faith. (Inadmissibility restricted to goods and services for which the use is tolerated);
• Unenforceability of unrecorded and unpublished (Special Register of Marks) transfer of ownership rights or licensing rights of exploitation against third parties;
• Use in good faith of the name, address, pseudonym, a geographical name, or accurate information concerning the nature, quality, quantity, purpose, value, place of origin or time of production of trademark owner’s goods or rendering of his services in so far as the use in question is limited to the purpose of mere identification or information and cannot mislead the public as to the source of the goods or services;
• Use of mark in relation to goods that have been lawfully sold under the mark on the national territory of the member State, on condition that the goods have not undergone any alteration;

Registration confers proprietary rights to the trademark owner; as such no person can enforce any right referred to in the Bangui Agreement pertaining to a trademark of which he has not filed for registration with the Organization pursuant to its prescribed rules of filing. Rights relating to prior usage are generally enforceable through claim of ownership applications, where a mala fides third party has gone ahead of the prior user to effect a malicious registration.

Exhaustion of Rights Or First Sale Doctrine (Parallel Imports)

Note that during the Uruguay negotiations, it was agreed that this matter should be left at the discretion of member states, and Art. 6 of the TRIPS Agreement adopted the same approach, subject to member states respecting the principles of national treatment and most favoured nations inscribed in its instrument.

It is a generally accepted principle of intellectual property law that the exclusive rights of sale and distribution belonging to a right holder expire the moment he puts the product in the market or from the moment the product reaches the market with his consent, and that the right holder can no longer exercise any form of control over the circulation (sale, transfer or distribution) of the product as long as they are authentic and original. These limitation of rights do not affect an action that the right holder can bring against unauthorized reproduction or public broadcasting.

While it is generally accepted that there is an exhaustion of rights in the territory where the product in question is introduced, it is still unsettled whether or not the principle of exhaustion applies when the product is introduced in a foreign market. The answer will depend on the exhaustion regime applicable; international or national. This answer will determine whether or not parallel imports will be acceptable as fair practice.

In a jurisdiction which applies the regime of national exhaustion, the right holder’s rights are exhausted by the introduction of his product in the local market, but his rights will not be regarded as exhausted relative to products which he introduced or authorized their introduction in foreign markets. As such, he maintains control over the distribution and importation of products placed in the foreign market in the local market. As such he can prevent the importation of products he placed in a foreign market into the country of origin.

On the other hand, in a jurisdiction where the regime of international exhaustion of rights is applicable, the right holder’s rights of distribution are exhausted in that territory no matter where the product was first introduced, and he can no longer exercise any rights to prevent importation of such products which he introduced in other markets. As such parallel imports are legally valid in countries which apply an international exhaustion of rights regime.

IP rights being territorial and the AIPO constituting one and the same territory of 17 member states, and hence a common market, the doctrine of exhaustion of rights will apply to the 17 AIPO member states, hence a regime of regional exhaustion of rights. The AIPO does not recognize rights pertaining to trademark owners to control the distribution of goods or prohibit the importation of goods introduced in foreign markets, as such, it can be deduced that the regime applied by the Bangui agreement is the international exhaustion of rights (Art. 7(4)). This should be read together with ANNEX VIII of the Bangui Agreement on Protection Against Unfair Competition which sanctions acts contrary to honest practice. However ANNEX VIII does not include parallel imports in its categorization of acts which constitute dishonest practice.

Further, according to the list of infringing acts in the Bangui Agreement, the commercial exploitation of goods that have already been placed in the market of one of the member states of AIPO or outside the AIPO jurisdiction does not constitute an infringement. It can be inferred that the rights have therefore been exhausted (regional exhaustion).

Remedies for Infringement

Remedies for infringement in the AIPO jurisdiction are manifold. They can be initiated either at the level of the adjudicating organs of AIPO or at the level of the courts. At the level of the civil and criminal courts the following can be obtained:

• Punitive measures (imposition of penalties in the form of fines, imprisonment and deprivation of rights to participate in professional groups for up to a period of ten years);
• The court may order the confiscation, and or destruction, of goods bearing a mark recognized as infringing and also that of the implements that served specifically for the commission of the offense ;
• Where a registered trademark has not been exploited for the past five (5) years in an uninterrupted manner in one of the national territories of a member State, the court may at the request of any interested party order the cancellation of the said trademark;
• Invalidation: a proceeding which is initiated by the Office of the Public Prosecutor, a professional group or any interested party to invalidate a mark which does not constitute a sign recognized as a mark according to the Bangui Agreement, or is not a mark eligible for registration according to the Bangui Agreement, or against a mark which conflicts with a prior right.
• Where the registration conflicts with a prior right, invalidation may only be pronounced at the request of the owner of the prior right.
• The owner of a mark may bring a civil action for the infringement of his mark in which case he may also recover damages for prejudice suffered;
• The opposing party may also file an application for the issuance of an infringement seizure order before the president of the civil court within whose jurisdiction the action is to be taken (such an order involves the making of a detailed inventory, with or without seizure, of the goods or services infringed).

Additionally, an aggrieved party may have recourse to organs of OAPI for redress. The following options are open to him:

• Claim of ownership: where the aggrieved party desires to enforce his prior usage rights against a mala fides (malicious) registrant. Here, OAPI may simply cancel the infringing party’s mark from the registry;
• Oppositions: These are generally actions brought before OAPI Opposition Commission by interested parties opposing the registration of a mark which either doesn’t fall under the category of signs recognized as marks or marks eligible for registration, or based on infringement, by the applicant, of a prior registered right belonging to the opposing party.
• Other Causes of Litigation: There are other reasons which may invite trademark owners to seek relief from the OAPI registry, particularly, in the case of restoration of trademark rights and restoration of priority rights (Restoration Commission) in the case of failure to file priority documents within six (06) months of filing of trademark. Classically, owing to circumstances beyond his control, a trademark owner may forget to renew his title in time and miss the six (06) months deadline to renew. In this case he can file for restoration of rights of mark or priority claim as the case may be.

Generally, in the case of restoration of rights the owner is expected to pay the requisite renewal fees due every ten (10) years, and a late renewal fees, within six (06) months from the date on which the said circumstances ceased to exist, and at the latest within a period of two years from the date on which renewal was due.

The restoration applicant is expected to file a statement of the grounds on which the owner or the entitled persons consider the restoration justified. The restoration commission shall examine the application and accept or reject the application depending on whether it considers the grounds raised valid or not. Appeal shall lie with the High Commission of Appeal within thirty (30) days following notification of the restoration decision.

Rights of Licensees including Exclusive Licensees

The rights subsisting in a mark shall be freely transferable in whole or in part.

The licensing of the right of exploitation of a mark shall be evidenced by writing, duly signed by the parties, on pain of invalidity. It may relate to all or some of the goods or services to which the mark applies. Its validity may be limited to the national territory of one of the member States.

The duration of a license may not be longer than that of the registration of a mark.

Unless the license is registered in the Special Register of Marks of OAPI and published in the official Bulletin of OAPI, it remains unenforceable against third parties.

In the absence of provisions to the contrary in the license contract, the grant of a license shall not preclude the licensor from either granting licenses to other persons, subject to notifying the licensee, or from using the mark himself.

The grant of an exclusive license shall preclude the licensor from granting licenses to other persons and, in the absence of provisions to the contrary in the license contract, from using the mark himself.

In the absence of contrary provisions in the license contract, the license shall not be assignable to third parties and the licensee shall not be authorized to grant sublicenses.

Restrictions not derived from rights conferred by the registration of the mark or not requisite for enforcement of such rights, imposed on licensee by license contract shall be invalid.  Such invalid clauses shall be identified by a civil court at the request of any interested party.

Any party to a license contract shall be eligible to intervene in infringement proceedings brought by another party in order to secure compensation for prejudice specific to him. An exclusive licensee may bring an infringement action, unless otherwise provided for by the license contract, if the licensor fails to act after having been called upon to do so.

Comments:

The peculiarity of the Bangui Agreement must be underlined. It regroups seventeen (17) member States under one jurisdiction, who have all acceded to the following international instruments relevant to trademark owners and interested parties:

• Trademark Registration Treaty at Vienna on June 12th, 1973;
• Paris Convention for the Protection of Industrial Property of March 20^th, 1883, revised at Stockholm on July 14^th , 1967;
• Lisbon Agreement of October 31^st, 1958, revised at Stockholm on July 14^th, 1967;
• WIPO Convention signed at Stockholm on July 14^th, 1967;
• Nairobi Treaty on the Protection of the Olympic Symbol of 1981;
• Marrakech Agreement Establishing the WTO including the TRIPS Agreement of April 15^th, 1994.
• Madrid Protocol relating to the Madrid Agreement on the International Registration of Trademarks.

Timelines

At OAPI, an applicant can request for a Trademark availability search. The results are issued by OAPI within ten (10) working days, everything being equal.

After filing for a Trademark registration, the applicant is issued with a provisional proof of filing bearing the seal of OAPI.

Within three months from filing, OAPI issues the official filing receipt which bears the official filing number and date.

The Registration Certificate is usually issued between eight (08) to ten (10) months from filing.

OAPI Accession to the Madrid Protocol

During an ordinary session in December 14, 2013, the Administrative Council of OAPI, which is the highest authority of the Organisation, approved a resolution (Resolution 53/25) authorizing OAPI’s accession to the Madrid Protocol relating to the Madrid Agreement on the international registration of trademarks. Following this resolution, the Director General of OAPI proceeded to deposit OAPI’s instrument of ratification of the Madrid Protocol before the WIPO on December 5, 2014.

Official Fees:

• Trademark Availability Search

-Trademark availability search in one class (up to three classes): 95.000 FCFA or 146 Euros;

For any additional class after the first three classes: an additional 10.000 FCFA or 16 Euros.

• Trademark Registration

Filing a Trademark application in the first three classes, obtaining the Certificate of Registration, and Publication:  400.000 FCFA or 611 Euros;

Any additional class after the first three classes: an additional 82.000 FCFA or 126 Euros;

Colour publication: an additional 50.000 FCFA or 77 Euros;

If a priority is claimed: an additional 75.000 FCFA or 115 Euros for each priority claim.

3) Trademark Renewal

Renewal charges: 400.000 FCFA or 611 Euros;

Per class renewed: 100.000 FCFA or 153 Euros;

Late renewal within six months following the renewal date: 130.000 FCFA or 199 Euros.

4) Trademark Recordal

For each recordal in the Special Trademark Register (changes having to do with the property of the Trademark, Assignment, Change of Name, Change of Address, Merging of Companies, Change of Legal Form, cancellation or Expiration of Trademark License): 265.000 FCFA or 405 Euros.

Note that AIPO does not accept applications for changes on the essence of the trademark itself.

5) Oppositions

The official fee for Oppositions before OAPI is 150.000 FCFA or 230 Euros

6) Corrections

For correction of an error on the application forms before publication: 61 Euros;

For correction of an error on the application forms after publication: 92 Euros.

7) Appeals

Fees for appeals lodged at the High Commission of Appeal are 960,000 FCFA or 1466 Euros

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