Registration under the Madrid system in Africa
The Madrid System facilitates the filing and registration of trademarks electronically to all countries that have ratified the Madrid Agreement relating to international registration.
Concerning African countries that are members of the Madrid Agreement, the use of the Madrid system presents a proven commercial risk regarding the enforceability of registrations made by this means.
Consequently, several factors must be considered when undertaking risks:
- Transposition into the body of national law: National laws on trademarks or intellectual property should expressly recognize the validity and enforceability of international registrations with possibly transitional provisions or implementing directive.
- A period of 12 to 18 months for the examination of procedures, publication and objections to WIPO by the designated Office.
- A special register of international registrations maintained by Offices.
Therefore, it is highly advisable to perform the base application on a safe Office: during the first 5 years of registration any invalidation, limitation or cancellation action that succeeds against the basic registration also affects all other country designations. Should you want to be more cautious, we would recommend filing directly before the national office of interest.
21 African offices could be designated by the Madrid system: Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.
However, so far only four of them are responding to upstream compliance measures namely Kenya, Mozambique, Morocco and Tunisia.