The mandatory registration of trade names under Cameroun law
By Barristers Ferdinand Doh Galabe & Jacob Akuo
OAPI Licensed Intellectual Property Attorneys
Most traders and businesses are unaware of this, but since the entry into force of Order no 005970/MINMIDT of August 11, 2015 governing the registration of trade names in Cameroon by Cameroon’s Minister of mines, industry and technological development (Cameroon’s IP minister), it is obligatory to register your trade name in Cameroon.
Trade names in Cameroon are governed by the provisions of Annex 5 to the African Intellectual Property Organization Treaty signed in Bamako on December 14, 2015 amending the February 24, 1999, Bangui Agreement.
For starters, a trade or business name is the name under which a trade, industrial, craft, agricultural or other business establishment is known and exploited. They are otherwise referred to as business names, company names, ‘‘doing business as names’’ or DBA names, etc. Popular examples of trade or business names in Cameroon are Cameroon Development Corporation (CDC), ‘‘ENEO Cameroon PLC’’, ‘‘les Sociétés Anonymes des Brasseries du Cameroun’’, ‘‘MTN Cameroon PLC’’, ‘‘United Bank for Africa Cameroon PLC’’, ‘‘Cameroon Petroleum Depots Company PLC’’, etc. A trade name is the name of a company, an international organization, a nonprofit entity, a partnership, a professional body, a state entity, etc.
Trade names are usually confused with trademarks which are signs used or intended to be used and capable of distinguishing the goods or services of a person or business. Examples of prominent trademarks include Apple, Coca Cola, Google, Amazon, McDonalds, M&M, Nike, Adidas, etc. While trade names identify specific entities, trademarks distinguish goods or services that are commercialized by specific entities. It does happen in many cases that trade names are also trademarks of businesses. Nonetheless, they remain two distinct industrial property rights with different regimes of protection.
To register a trade name at the African Intellectual Property Organization (OAPI), the name or designation in question must be eligible for registration as such. This means that by reason of its nature or the use to which it may be put, the name or designation is not contrary to morality or public policy and that it is not liable to mislead trade or business circles or the public as to the nature of the trade, industrial, craft, agricultural or other establishment of that name.
A name or designation may be contrary to morality or public policy because, for example, the name is insulting or obscene, promotes crime, glorifies a vice or undermines values that are dear to a society, etc. A designation or name may be liable to mislead business circles or the public in general as to the nature of the trade, industrial, craft, agricultural or other establishment, if it gives the false impression, for example, that it is associated to another business or misleads people as to its origins.
There is a first use and first filing hybrid principle under the applicable trade name rules. This means that the first person who uses a trade name or who files an application to register a trade name at OAPI is deemed to be the owner of the trade name. As a matter of law, it is not possible to institute criminal proceedings against a person who is infringing your trade name if the trade name is not registered with OAPI.
Normally, the registration of a trade name confers exclusivity of use of the registered trade name. Nevertheless, such exclusivity cannot be invoked against good faith third parties to prevent them from using their names, their addresses, a pseudonym, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production of their goods or of the supply of their services, in so far as such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. Be that as it may, such a person is obliged to take all necessary measures, by an addition to his trade name or by any other manner, to distinguish his trade name from that of the registered trade name.
Given that Cameroon is one of the seventeen (17) member states of OAPI, an application for the registration of a trade name is filed with OAPI. The application fees are 10.000 FCFA for physical persons and 20.000 FCFA for juristic persons. Applicants have to negotiate agency fees with their OAPI licensed intellectual property agents who will assist them to file their application to register their trade name.
As a matter of course, it is advisable to conduct an availability search prior to filing the application for the registration of the trade name. This permits the applicant to ascertain the existence on the register of trade names, any prior registered trade name that may be similar or identical to that of the applicant. To issue an availability search report, OAPI charges an additional fee of 90.000 FCFA. Knowing the registration status of similar and/or identical trade names prevent or mitigate unnecessary litigation, be it administrative within the OAPI system or through ordinary courts. It also advises prior users of the prior registration of their trade names by bad faith registrants.
Registered and published trade names produce their effects in each of the seventeen (17) Member States of OAPI. The statutory period of validity of trade names is ten (10) years, although they can be preserved indefinitely by being renewed on the anniversary date after every ten years. Where the owner of a trade name fails to renew them after the expiry of their statutory period of validity, the name falls into the public domain, which means that any member of the public can appropriate and use it.
Where a person goes out of business or changes their trade name (due to a merger, or rebranding campaign or any other reason), they can expressly renounce a trade name by complying with certain formalities.
By the same token, registered trade names can be cancelled or invalidated if they conflict with other prior registered trade names or if they are exploited in violation of the law. Actions in this regard are instituted before ordinary courts of law.
Finally, as intellectual property, trade names can be assigned or transferred to another person. The law, however, subordinates such transfer to be concomitant to the transfer of the entity itself. That is, to assign the business name of a company to another person, the business itself must be acquired by that person. Such assignments must be recorded in the OAPI trade names special register in order to be binding on third parties.
The law is silent concerning licenses of trade names, leaving room for recourse to the popular common law maxim, “everything which is not forbidden is allowed”. Besides, it is a rule of statutory construction that what is not expressly or impliedly prohibited by law may be done, except when the act is contrary to morals, customs and public order.
Dayspring Law Firm is an OAPI Licensed Intellectual Property Agent. Our IP practitioners have advised and assisted countless numbers of IP rights owners with the protection of their IP assets. We offer across the board intellectual property services in every aspect of intellectual property law.
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