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OAPI - ENTRY INTO FORCE OF THE REVISED BANGUI AGREEMENT OF 14 DECEMBER 2015, BAMAKO

Updated: Jul 18


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:

  1. Issuance of a filing report

  2. Issuance of an official receipt of filing

  3. Registration of the trademark

  4. 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:

  1. Issuance of a proof of filing

  2. Issuance of a certificate of filing after examination of form (admissibility) - this certificate indicates the publication period

  3. Publication after substantive examination*

  4. Registration of the trademark

  5. 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

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