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Monday, 24 July 2017

HOW DO I HAVE A TRADEMARK RECOGNISED AND PROTECTED IN ONE OR SEVERAL AFRICAN STATES

By Ninsiima Irene: Email: ninsiima@lawyers-uganda.com
Regional protection of trademarks in African states that are member states to the Banjul Protocol on Marks is achieved through registration of a trademark(s) in a member state (s) through ARIPO secretariat offices or directly through the Intellectual Property Office of the member state. The African Regional Intellectual Property Organisation (ARIPO) which is an Intergovernmental Organisation for Cooperation among African States on Matters of Intellectual Property is entrusted with the registration of marks and the administration of such registered marks on behalf of the Contracting States.
The Banjul protocol in line with the ARIPO’s objectives was adopted to promote the harmonisation and development of intellectual property laws and to establish common services necessary for the co-ordination, harmonisation and development of intellectual property activities affecting its members. The protocol was adopted on November 9 1993 at Banjul and entered into force on March 6 1997. As of today, it has been ratified by a number of African States that include; Uganda, Kenya, The United Republic of Tanzania, Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Zimbabwe, Gambia, Ghana, Kenya, Mozambique, Sierra Leone, Sudan and Zambia. The protocol provides a centralised trademark registration procedure.
Direct registration in a member state is done by an application to the Intellectual Property Office of such member state and the application is considered basing on the domestic legislation of such member state and its requirements. This is in line with the Paris Convention for Protection of Industrial Property, 1883, which incorporates the principal of territoriality and allows a sovereign state to be able to decide on whether a given trademark should be registered basing on its national laws.
All applications through ARIPO Secretariat for the registration of a mark are filed either directly with the Office or with the Industrial Property Office of a Contracting State by the applicant or his duly authorized representative who then transmits the application to the secretariat. Where the applicant seeks to have his mark(s) protected in several countries, such countries have to be designated on the application. The application is considered by the secretariat and once it meets all the formal requirements, it is forwarded by the secretariat to each designated state. Upon receipt of the application, the designated state then considers the application basing on its national laws.
An application for registration of a Mark which has been accepted by any designated State is then published in the ARIPO Marks Journal as having been accepted by the designated State or designated States concerned. At any time after the publication in the Marks Journal of an application as accepted by the designated State or designated States but before the registration of the mark by the secretariat, any person may give a notice of opposition to the application for registration in a designated State or designated States. Once notice of opposition is lodged, the application is treated according to the opposition procedures laid down under the national laws of the designated State or designated States concerned.
Where no opposition has been made or where it has been successfully defended, the mark(s) is registered by the Secretariat office three months after the publication in the Marks Journal. The registration is then recorded in the Marks Register and the Secretariat Office issues to the applicant a certificate of registration. The fact of registration of a mark is then published in the Marks Journal.
The registration of a mark remains valid for a period of 10 years from the filing date and may be renewed for further periods of 10 years.  The renewal of the registration must be effected on or before the date of expiration of the original registration or of the last renewal of the registration though a grace period of 6 months is allowed, in either case, on payment of a surcharge.
The registration of a mark by the ARIPO Secretariat has the same effect in each designated State, with respect to rights conferred by the mark, as if it was filed and registered under the national laws of each such state. The national laws of each Contracting State apply to the cancellation of a registration, whether based on non-use or any other grounds.