Since January 1st, 2022, the revised Bangui Agreement of December 14, 2015 has entered into force for Annexes III (Trademarks), IV (Industrial Designs) and V (Trade Names), introducing an overhaul of the procedures for registering these titles with the African Intellectual Property Organization (AIPO).
Except for Annex I on Patents, Annexes VI (Geographical Indications), VII (Literary and Artistic Works), VIII (Unfair Competition) and X (Plant Varieties) had already entered into force on 14 December 2020.
Following this logic, we can therefore expect Annex I on patents to come into force at the end of 2022.
SOME GENERALITIES ABOUT THE CHANGES:
Introduction of new official taxes
Introduction of new regulatory provisions regarding administrative procedures.
OAPI is now competent to deal with opposition and ownership claims on all industrial property titles (except for patents as the new Annex I has not yet come into in force)
Introduction of new provisions for future online services for the filing of IP titles.
New border control measures on certain intellectual property rights
The introduction of optional dispute resolution through mediation for the parties
The integration of the procedures concerning the registration of the international trademark under the Madrid Agreement and Protocol into the body of Annex III of the Trademark Agreements.
Zoom on Trademarks:
SIGNS ADMITTED AS TRADEMARKS
BEFORE
Trademark categories:
Individual Trademark
Collective mark
Types of marks:
Word marks
Figurative / Semi-figurative marks Categories of marks
NOW
Trademark categories:
Individual Trademark
Collective Mark
Certification Mark
Types of marks:
Traditional trademarks (word or complex)
Sound marks
Audiovisual trademarks
Serial marks
SCOPE OF APPLICATION FOR REGISTRATION
BEFORE
3 class package, then additional official fee for additional classes
Applications cannot designate both classes of goods and services. (e.g. 2 filings will be required for a trade mark filed in classes 5 and 35)
NOW
End of the 3-class package: Official fee applicable from the 2nd class.
Goods and services classes can now be included in the same application
Please note that while trademarks can be filed for both goods and services classes in the same application, renewal applications remain separate for old registered trademarks. Two separate renewals will therefore have to be made: one for goods class marks and one for service class marks.
REGISTRATION PROCEDURE
BEFORE
Paper filing made with the Trademark Office. Then:
Issuance of a filing report
Issuance of an official receipt of filing
Registration of the trademark
Publication of the registration
NOW
Introduction of e-filing in the legislation / paper filing (the legal bases are introduced, but online filing remains unavailable at present), then:
Issuance of a proof of filing
Issuance of a certificate of filing after examination of form (admissibility) - this certificate indicates the publication period
Publication after substantive examination*
Registration of the trademark
Publication of the registration
Possibility of requesting the division of the application during the procedure
Note that the publication of the mark for opposition purposes occurs before registration.
*The Office carries out an examination of the distinctiveness of the sign and of the distinctiveness in relation to international non-proprietary names (INNs) / geographical indications. However, no examination based on relative grounds is carried out (no check on prior marks).
DEFENCE OF RIGHTS
BEFORE
Oppositions & claims
6 months after publication of the registration for oppositions
6 months after publication of registration for ownership claims
Mandatory prior filing within the 6 months period for assertion of ownership
3 months to appeal against decisions (opposition & claim actions)
Infringement actions / seizure of infringement
Certificate of non-dissolution required to bring an action
Penalties between 1.500 and 9.100 EUR fine / imprisonment from 3 months to 2 years
NOW
Oppositions & claims
3 months after publication of the application for oppositions
3 months after publication of the application for actions to claim ownership / no need for prior trademark filing
2 months to appeal against decisions (opposition & claim action)
Claim of ownership now possible before the court
Infringement actions / seizure of infringement
No more need for a certificate of non-dissolution for the implementation of the action.
Search for information on request in the context of the infringement action so that the judge can request information under penalty in order to determine the infringing networks and processes
Penalties of between EUR 7,600 and 45,800 in fines / imprisonment of between 3 months and 2 years / Possibility of damages fixed by the judge according to the prejudice suffered
Penalties in the field of compulsory trademarks* between 7,600 and 15,250 EUR fine / imprisonment from 3 months to 2 years.
*OAPI now recognizes the compulsory nature of the trademark for certain goods and services, in accordance with the national provisions of certain member states
Border measures
At the request of the trademark owner, the customs administration of the Member States may detain suspected counterfeit goods during its controls
Even in the absence of a request from the trademark owner, customs administrations may detain suspected counterfeit goods
FEW WORDS ON THE TRANSITIONAL PROVISIONS:
The new Agreements apply as of 1 January 2022 for all new applications (filing, renewal, entry in the Register) for all intellectual property titles as of that date except for patents.
The new official fees also apply from this date of 1 January 2022 for all applications.
Regarding litigations and contentious proceedings, the old Agreements remain applicable for all intellectual property titles filed before 1 January 2022.
Authors:
Ayé AKANI - OAPI Trademark and Patent Attorney
Jeremy GIACOPAZZI - French & European IP Lawyer, OAPI Trademark and Patent Lawyer