In this 74th instalment we canvas the ARIPO mandates on the protection of trademarks.
Intellectual Property Perspectives Richard Pasipanodya
The Banjul Protocol on Marks which was adopted by the ARIPO Administrative Council on November 19, 1993 as revised, is the relevant regional instrument for the protection of trademarks.
It is the second of the ARIPO administrative instruments to be adopted after the Harare Protocol on Patents and Industrial Designs of 1982. The underlying objective was to provide common services by pooling together resources in the administration of trademarks on behalf of member states of ARIPO.
As is the case with the Harare Protocol, its application is subservient to the relevant provisions of WIPO-governed Paris Convention for the Protection of Industrial Property (Paris Convention). Further, it incorporates the Nice International Classification of Goods and Services (Nice Classification) with respect to classes of goods or services to which trademarks are to be applied.
Moreover, it is applied in parallel with the national laws of contracting member states of ARIPO. As such, its crafting was meant to approximate or bring closer the national laws of ARIPO member states.
For a variety of reasons the Banjul Protocol did not find much affection with member states as did the Harare Protocol. To date it has managed to attract the signatures or accessions of nine member states out of a possible 18, namely, Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Tanzania and Zimbabwe. What this means is that there is lesser coverage of approximated regional trademark protection within the ARIPO community than there is under the Harare Protocol.
Filling of application
Applications are either filed directly with the ARIPO Office or indirectly with the national intellectual property (IP) office of the contracting states.
Formal examination and filing date
Upon receipt, the ARIPO Office undertakes a formalities examination of the application. This entails ascertaining whether the application as lodged complies with the requirements for trademark registration.
To be complete, the application must contain an express or implied statement that registration of a mark is sought (request), a clear indication as to the identity of the applicant including their contact details, a clear reproduction of the mark sought to be registered, a list of goods or services over which the mark is sought to be registered, a declaration of priority where necessary, designation of countries in which protection is sought.
The priority date of an application is the date on which the applicant filed a corresponding earlier application in a convention country. A convention country is one signatory to the Paris Convention for the Protection of Industrial Property (Paris Convention) 1883 as revised. This can be a member state of ARIPO, whether or not it is a contracting state to the Banjul Protocol or any other state the world over. Priority is claimed within six months from the date of the earlier filing.
A trademark is not registered in a vacuum but in relation to classes of goods or services as categorised by the Nice International Classification of goods and services. ARIPO uses this international standard of classification whether or not the designated state is party to the Nice Classification. It is the accepted standard norm and practice. Thus where the application is received without proper classification of goods or services over which the mark is sought to be registered, ARIPO will do so on behalf of the applicant
Where pursuant to undertaking formalities examination the ARIPO office is of the opinion that certain formalities requirements have not been complied with it notifies the applicant thereof and concurrently invites them to so comply within two months of receipt of such notice. If the applicant fails to so comply then the ARIPO office will refuse the application for non-compliance with the formalities requirements. In which event the applicant has three months to request that the application be treated in accordance with the national laws of the designated states. That is to say the application is converted into a national application.
Examination as to substance
Where the ARIPO office is of the opinion that the application as lodged complies with the formalities requirements it is duty bound to notify all the designated states of that fact. The application shall then be transmitted for examination by the designated states in accordance with their national laws. The designated states have up to 12 months within which to object to the registration of trademark with respect to their territories.
Publication and registration
Upon acceptance by the designated states, or where refusal has not been communicated, the ARIPO office will proceed to publish the mark in the Marks Journal. Publication shall be done for three months then thereafter the mark would be registered if no opposition is received. Such registration would enter into full force and effect in the designated countries as if the registration was done in accordance with their national laws. In this event the registration will be governed by the national laws of the designated states, including cancellation of the registration. The duration of the trademark is 10 years subject to renewal or other infinite periods of 10 years each.
Section 9 of the Banjul Protocol provides an opportunity for the applicant to later designate other states, whether the application is still pending or after registration. This provision is meant to take on board instances where other state members adopt the Protocol in the interim period. Where this occurs similar processes in the prosecution of the mark as applied to other states will be followed in word and spirit.
Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775 053 007 or e-mail: email@example.com'