The High Commission of Appeal of the African Intellectual Property Organisation
By Ferdinand Doh Galabe
I – Introduction
The African Intellectual Property Organization (AIPO) is an intergovernmental organization originally created by the Libreville Treaty of 13/09/1962 which was supplanted by the Bangui Treaty/Agreement establishing the AIPO adopted on 02/03/1977, then revised in Bangui on 24/02/1999 and recently revised again in Bamako on 14/12/2015.
When the AIPO was first created, the organization was called the African and Malagasy Industrial Property Office or AMIPO (in French Office Africain et Malgache de la Propriété Industrielle abbreviated OAMPI) until the withdrawal of Madagascar from the organization during the Cold War and its rebranding in 1977 as AIPO. AMIPO (OAMPI) had taken over from the French National Institute of Industrial Property (INPI-France), which until then had been responsible for protecting trademarks in the former French colonies in Africa.
Today the AIPO comprises seventeen (17) member states including in alphabetical order: Benin, Burkina Faso, Cameroon, Central African Republic, Comoros Islands, Congo Republic, Cote-d’Ivoire, Equatorial Guinea, Gabon, Guinea Republic (Conakry), Guinea Bissau, Mali, Mauritania, Niger Republic, Senegal, Tchad, and Togo. These countries make up a market of approximately 185 million inhabitants. Membership is open to African countries who have ratified four (04) key IP treaties, including, the WIPO Treaty, the Paris Convention for the Protection of Industrial Property (1883), the Berne Convention (1886) for the Protection of Literary and Artistic Works (and/or the Universal Copyright Convention), and finally the Patent Cooperation Treaty (PCT) of 1970.
The legal framework underpinning the intellectual property system of the AIPO constitutes primarily the Treaty and its ten (10) annexes which form part and parcel of the Treaty itself. These ten (10) annexes cover the various IP subject matters and unfair competition, including: annex I (patents), II (utility models), III (trademarks), IV (industrial designs), V (trade names), VI (geographical indications), VII (literary & artistic works), VIII (unfair competition), IX (topographies of integrated circuits), & X (new plant varieties).
The transition from the old legal order instituted by the Revised Bangui Agreement of 24/02/1999 into the new legal order instituted by the new Agreement revised in Bamako on 14/12/2015 has been gradual, and the entry into force of the various annexes has been piecemeal.
The Bangui Agreement revised on 14 December 2015 in Bamako entered into force on 14 November 2020, two months after the deposit of the instruments of ratification by two thirds of the signatory States. On that date (14/11/2020), Annexes VI (geographical indications), VII (literary & artistic property), VIII (unfair competition) and X (plant varieties) also entered into force.
Meanwhile, Annexes III (trademarks), IV (industrial designs) and V (trade names) of the Bangui Agreement revised in Bamako on December 14, 2015 entered into force on January 1, 2022. As at May 15th 2022, annexes I (patents), II (utility models) and IX (topographies of integrated circuits) of the 1999 Bangui Agreement are still in force, while annexes III (trademarks) to VIII (unfair competition) and X (plant varieties) of the new Agreement of 2015 have already entered into force.
The organization has halted the entry into force of the above-mentioned three annexes on patents, utility models and topographies of integrated circuits because of their technical and complex nature which requires that both the personnel of the organization as well as licensed practitioners should be allowed ample time to master their technicalities and complexities prior to final transition by entry into force of all instruments.
The functioning of the organization is characterized by several elements, including:
- a common (uniform) system of protection of industrial property rights established on uniform laws and a community (regional) functioning which underline the uniqueness of AIPO as an industrial property office,
- common administrative procedures,
- a single application system which has the effect of as many national applications which in fine gives rise to rights that are automatically valid in all 17 member states without any further formalities in the individual member states,
- a direct filing system (with the organization or its national liaison offices),
- a single IP office which serves as the national office (for PCT applications), the designated office (for PCT & Madrid Protocol applications), the elected office (for PCT applications), the receiving office (for PCT applications) and the office of origin (for Madrid Protocol applications) for its member states,
- the rights relating to the fields of intellectual property, as provided for in the Annexes to the Agreement, are independent national rights, subject to the laws of each of the AIPO Member States in which they have effect, and
- final judgments delivered by a court in one of the AIPO Member States in application of the provisions of the Annexes are binding in all the other Member States, except for court judgments based on public order (defined as the fundamental conceptions of living together within a society) which vary from one Member State to another.
As already mentioned, the protection granted by the rights registered before the organization are deemed independent national rights subject to the domestic law of each member state, although most member states do not have such IP laws and indeed do not have any need of such. AIPO norms enjoy supranational application within member states and foreigners who protect their rights before the organization enjoy national treatment, subject to reciprocity in their countries of origin.
Besides the offensive right of use and prior authorization as a condition sine qua non for third parties to exploit the right, the ownership of intellectual property rights equally confers on the right holder the defensive right to institute legal proceedings against infringers who without the right holder’s consent illegally perform acts that are protected by the ownership of the rights.
Infringing acts vary depending on the type of IP right (patent, utility model, trademark, etc.) and the nature of rights conferred under them, as we shall see eventually. Persons who violate these rights which are legally conferred on the rightsholders are considered as infringers (counterfeiters) and legal proceedings can be instituted by the rightsholder or any other interested party against such persons before the competent bodies according to the applicable law.
In the digital age, infringement can also take place virtually, for example, the illegal use of protected distinctive signs on the internet (the case of domain names infringement or cybersquatting, etc.). The AIPO rules do not expressly provide for cybersquatting, although such disputes are generally settled judicially or through ICANN’s (Internet Corporation for Assigned Names and Numbers) domain name dispute resolution system.
Moreover, domestic administrative dispute settlement mechanisms exist for country-level domain name disputes as well. For example, in Cameroon the authority in charge of administering this is ANTIC (Agence Nationale des Technologies de l’Information et de la Communication), the national internet regulatory agency.
The modes of exercising the defensive right to institute legal proceedings against infringers range from seizing the various administrative dispute settlement commissions instituted within the Directorate-General of AIPO and/or the High Commission of Appeal, down to litigation before courts of law of AIPO member states and finally to alternative dispute settlement mechanisms, including mediation and arbitration. Our intention is not to cover all these different mechanisms, but to briefly present AIPO’s highest administrative dispute settlement body.
II – The Legal Foundation of Dispute Resolution at AIPO
Article 4 (1) and (2) of the Bangui Agreement Instituting the African Intellectual Property Organization of March 2, 1977 Revised in Bangui on February 24, 1999 and in Bamako on December 14, 2015 lays down in summary the regime of litigation and alternative dispute resolution within the AIPO space by providing as follows:
“Unless otherwise specifically provided for in an agreement signed by the Member States, disputes relating to the recognition, scope or exploitation of the rights provided for in this Agreement and its annexes shall fall within the jurisdiction of courts in Member States. These courts shall have exclusive jurisdiction over related criminal matters. Any dispute concerning the application of this Agreement and its annexes may be settled by arbitration or mediation.”
From the above, we can deduce that intellectual property disputes (civil and criminal) touching on the recognition, scope or exploitation of IP rights regulated by the Bangui Agreement are resolved generally through the following means:
- litigation before courts of law within the 17 member states of AIPO, or
- through alternative means, that is, arbitration and/or mediation.
This is notwithstanding the fact that member states may, under certain agreements, confer competence on other bodies to adjudicate intellectual property disputes. Otherwise, the other dispute settlement mechanisms include:
- administrative dispute settlement before AIPO’s dispute settlement bodies (oppositions, claims of ownership, restoration commissions within the Directorate General whose decisions can be appealed before the High Commission of Appeal).
Article 20 (1) and (2) of the above-mentioned Bangui Agreement equally provides, concerning the scope of judicial decisions delivered by courts of law within the 17 member states of AIPO that:
“Subject to the provisions of Article 4 above, final judicial decisions rendered in respect of the validity of titles in a Member State pursuant to the provisions of Annex I (patents) to Annex X (plant varieties) of this Agreement shall be binding on all other Member States, save for decisions based on public policy and morality. Final judicial decisions rendered in a Member State in areas other than the validity of titles shall be enforceable in all other Member States pursuant to an exequatur decision rendered in accordance with the legislation of the State concerned, save for decisions based on public policy and morality.”
It should be noted that Regulation no 13 of the Implementing Regulation of the Revised Bangui Agreement adopted in Bamako on December 8, 2020 defines public policy (ordre public) and morality (ordre public et bonnes moeurs) as follows:
“Public policy relates to fundamental conceptions of living together within a society”, while morality relates to “habits and moral practices generally accepted by a group or society.” The relevant public policy taken into consideration is the national public policy of the member state or country of origin of the applicant.
III – The Competence of the High Commission of Appeal
Articles 31 and ff of the the Revised Bangui Agreement adopted in Bamako on December 8, 2015 and the regulations on the High Commission of Appeal (HCA) lay down the organization, functioning, competence and composition of the High Commission of Appeal which is the body competent to entertain appeals relating to:
1 – the rejection of applications for titles of protection of industrial property (including: patents or certificates of addition, trademarks, industrial designs trade names, and geographical indications);
2 – the rejection of applications for the maintenance or extension of terms of protection;
3 – the rejection of applications for restoration and recordals in the special register;
4 – decisions on oppositions and claims of ownership; and
5 – decisions of the DG of AIPO disbarring accredited agents, as well as all other decisions of the DG of AIPO.
The current applicable rules governing the appellate proceedings of the High Commission of Appeal were adopted by the Administrative Council (Board of Directors) of AIPO via Resolution no 11 on 4 December 1998. Two other relevant instruments regulate, firstly, the administrative fees for filing appeals before the HCA which was adopted on the same date via Resolution no 12, and the second one which regulates the indemnities of members of the HCA adopted on the same date via Resolution no 13. On 4 November 2001 certain provisions of Resolution no 11 were amended by Resolution no 19.
IV – The Composition of the HCA
The HCA is composed of three full members and three surrogate members who are selected from a list of representative judges (magistrates) in AIPO member states designated by each member state among magistrates who have at least 10 years professional experience as such and are knowledgeable in IP law. The members of the Commission serve a 2-year mandate which is renewable once.
The Commission is presided by one of its full members who is voted by his/her peers and for each session the presiding member appoints a member among the two (2) other members to serve as rapporteur. The role of the rapporteur is to examine the case file and submit a written report which is read during hearings, identifying the legal issues raised by the matter and proposing a solution to the dispute.
To seat and deliberate validly, the HCA must be composed of at least three members, one of which must be a full member of the HCA. The Director-General of AIPO or his representative can attend HCA hearings which are not open to the public.
The registry duties at the HCA are discharged by the personnel of AIPO appointed by the Director-General of AIPO. The role of the clerk/secretary of the HCA is to serve notices to parties, draw reports of all the sessions of the HCA and keep archives/records of proceedings.
The members of the HCA as well as AIPO staff who work in the Commission or who become aware of information relating to the proceedings of the Commission by virtue of their status as employees of the Commission or AIPO are bound by professional secrecy.
V – Introducing An Appeal Action Before the Commission
All appeals are filed in writing in five (05) copies within the prescribed deadlines, in a sealed recommended (registered) letter with request for acknowledgment of receipt and must be addressed to the registry/secretariat of the HCA. The appeal file includes the following:
1 – an application for the cancellation of the decision of the DG of AIPO pursuant to the HCA rules, containing the particulars of the appellant (name, address, contact, etc.) and those of his counsel, or any other particulars permitting the HCA to communicate with the appellant.
2 – a memorandum of appeal containing all the grounds of the appeal.
3 – proof of payment of the appeal fee of 960.000 FCFA.
The deadline to file an appeal before the Commission varies according to the nature of rights involved and the subject matter of the appeal as follows, in the case of patents, utility models, trademarks industrial designs and trade names:
- For patents (Annex I, 1999 Act & Rules 23 & 25 of the Implementing Regulation of 2020): it is sixty (60) days following the service of the rejection decision of the opposition, sixty (60) days following the service of the rejection decision of the claim of ownership, thirty (30) days following service of the rejection of the application for restoration of a patent or priority right per Article 41 (8);
- For utility models (Annex II, 1999 Act & Rule 40 (4) and 43 (3) of the Implementing Regulation of 2020): it is sixty (60) days following the service of the rejection decision of the opposition, thirty (30) days following service of the rejection decision of the application for restoration of a utility model or priority rights per Article 36 (6);
- For trademarks (Annex III, 2015 Act and Rules 59 (3), 60 (3) and 62 (3) of the Implementing Regulations of 2020): it is sixty (60) days following the service of the decision rejecting an application for the registration of a mark per Article 19, sixty (60) days following service of the rejection decision of the opposition per Article 15 (4) and sixty (60) days following the service of the rejection decision of the claim of ownership per Article 16 (4), sixty (60) days following service of the rejection decision the application for the restoration of a trademark or priority rights per Article 29 (6);
- For industrial designs (Annex, 2015 Act and Rules 74 (4) and 78 (3)): it is sixty (60) days following service of the rejection decision of the opposition or claim of ownership,
- For trade names (Annex V, 2015 Act, Rules 88 (3) and 90): sixty (60) days following service of decision rejecting application for registration of a trade name or following service of the opposition decision.
- For geographical indications (Annex VI, 2015 Act, Rules 107 & 110): for rejected applications for registration and for oppositions, sixty (60) days following the service of the rejection decision.
- For plant varieties (Annex X, 2015 Act, Rules 123 & 129), sixty (60) days following the service of the decision relating to the opposition or claim of ownership action.
Once the appeal is lodged at the registry of the HCA, the registrar transmits the file to the DG of AIPO who may, within one (01) month from the date of receipt of the appeal file, change his decision if he deems the appeal grounded, in which case the appeal fee paid by the appellant is reimbursed to the appellant.
Where the DG of AIPO does not change his decision within one (01) month following receipt of the appeal file, the registry of the HCA transmits the appeal file to the Presiding member/commissioner of the HCA within eight (08) days. In the case of an opposition, a copy of the case file is forwarded/served on any party to the opposition proceedings which resulted in the challenged decision.
VI – The Appeal Proceedings Proper
Upon the expiry of prescribed deadlines, where further inquiry is deemed necessary, the rapporteur appointed by the President of the HCA lays down the terms of such inquiry, in which case he can summon for hearing the appellant or his counsel, the DG or his representative, as well as any expert that he deems appropriate for the inquiry. Where the opinion of an expert is required, the appellant bears the costs of consulting such an expert.
In principle the HCA sits at least once every year, when necessary – in practice in certain years where the volume of dispute is significant, the HCA sits up to four (4) times. The seat (situs) of the Commission is at the headquarters of AIPO in Yaoundé, Cameroon. In tandem with the DG of AIPO, the President of the Commission sets the hearing dates and the duration of each HCA session. He also draws the cause list for each hearing.
The hearing date is communicated to the parties to the proceedings at least two (02) months in advance.
On the hearing date, the appellant or his counsel or the respondent can be allowed to present the grounds of his/her appeal or defense verbally, provided that the appellant or respondent made such a request prior to the hearing date, in which case the appellant or respondent must be present at the hearing. Where such a request was not formulated prior to the hearing date, the Commission refuses to entertain viva voce defenses on the hearing date.
After the oral submissions of the rapporteur, the oral submissions of the parties to the proceedings who requested in advance to make oral submissions are equally heard. Then the observations of the DG of AIPO or his representative are heard, and he provides information and documents requested by the Commission.
The Commission may adjourn the examination of the matter or the delivery of its decision to a later date or session.
The decisions of the Commission are adopted by majority vote, each member having one vote. The decisions of the Commission must be reasoned, dated and signed by the President and all members of the panel which heard the matter. The decisions are served by the registry of the Commission within fifteen (15) days following its signature, to the appellant or his counsel as well as to the DG of AIPO.
VII – Challenging the Decision of the Commission
The Commission sits as a first and last resort body. In other words, the decisions of the HCA are final and are not subject to appeal before any national or international body, although in case of material (clerical) errors, the DG of AIPO may seize the Commission for correction in its very next session.
VIII – The Effects of the Decision of the Commission
Where the DG’s decision is cancelled, AIPO is bound to proceed to register the right, to the issuance of the right or to its restoration and to its publication pursuant to the applicable annexes of the Revised Bangui Agreement and its implementing regulation. Where the decision reversed relates to the rejection of a recordation (recordal) application, AIPO is bound to enter the recordals in the special register.
Where the Commission cancels the decision rejecting an opposition to a registration, AIPO shall cancel the registration of the opposed right and shall publish the cancellation of the right in the official gazette.
Where the Commission cancels a decision on the cancellation of the registration of a right, AIPO shall restore such rights and publish the restoration.
IX – Uncertainty Concerning the Applicable Rules of Procedure Before the Commission
Strictly speaking, the source of procedural rules of law applicable before the Commission are the above-mentioned rules adopted by resolutions of AIPO’s Board of Directors (Administrative Council) as well as a few sections of the Treaty. These rules are very scanty and hence contain many lacunae which undermine principles of fair hearing guaranteed in every credible judicial system. While it may be easy to resort to general principles of law in the adjudication of disputes, it is another thing altogether when matters arise which touch on procedural rules which vary from one member state to another.
Besides the fact that AIPO member states were not confident enough to institute a full-fledged judicial body, the dire need to adopt judicial rules of procedure which are adapted to the complexities of IP litigation has been unfortunately swept under the carpet. The AIPO policy-makers have simply hidden behind the needle of the argument that the HCA is not a court of law or judicial body, although there is a lot in its rules which are analogous to those of courts of law and the effect of its decisions is at least comparable to that of judicial decisions.
Moreover, it has been argued, especially, that because judicial litigation proper is handled by the courts of law of member states which apply these complex procedural rules applicable within each member state, there is no need for the adoption of a comprehensive set of procedural rules to regulate disputes brought before the HCA.
Also, as AIPO is a multilateral (international) organisation consisting of seventeen (17) member states, the question arises as to the rules of procedure applicable before the Commission, since the procedural rules extant in one member state, which differ in many occasions, cannot be resorted to, to the exclusion of the rules of procedure in the other member states. This is without regard to the fact that in many occasions the parties to the proceedings are not nationals of an AIPO member state.
X – Conclusion
A delicate aspect of the HCA relates to the relationship between its decisions and those of courts of AIPO member states which take precedence over those of AIPO.
With the opportunities offered by the Treaty and the various annexes to litigating various matters relating to the subject matters covered, it is very likely that a decision taken by the HCA relating to the validity of a right may be contradicted by a later judgment of the court of a member state.
This situation creates a highly disturbing judicial uncertainty which can be addressed at two levels: firstly, by transforming the status of the HCA from an administrative jurisdiction to a full-blown judicial body or court per se, even with a multi-tier or multi-level system such as in the EU, for example, where administrative decisions of the EUIPO can be challenged before the EU General Court and finally before the EU Court of Justice. Secondly, by changing the legal regime of the adjudicatory system to devolve on the HCA a case law harmonising role similar to that of the Common Court of Justice and Arbitration (CCJA) of OHADA (Organisation for the Harmonisation of Business Law in Africa) which ensures that court decisions in OHADA member states are coherent.