OAPI and the Madrid System: undeniable success for African Intellectual Property Organisation

As a first step, it is important to note that the African Intellectual Property Organisation (OAPI) comprises 17 French-speaking countries, namely Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo and Comoros.

The OAPI is a regional system in the sense that one trademark application automatically covers all 17 member States and no further country designation is needed or even possible.

Therefore, this system is particularly advantageous for applicants since they can obtain protection in 17 through a single trademark registration procedure.

Moreover, on March 5^th, 2015 the OAPI ratified the Madrid agreement and has joined the Madrid system.

Therefore, since this date, all international trademark applicants are allowed to designate the African Intellectual Property Organisation in their application forms.

After more than 18 months of adherence, it is time to make a first “quantitative” assessment.

The results are undisputable: the OAPI’s accession to the Madrid’s system is a real success. Since the beginning of March 2015, OAPI has been designated in approximately 2000 international applications compared to 5000 to 6000 total OAPI applications per year prior to the accession.

Moreover, INLEX AFRICA law firm has set up a legal watch before the OMPI in order to be able to analyze the real consequences and direct repercussions or collaterals resulting from this accession.

These seem to be obvious: thanks to the attractiveness of the African continent and the particularly advantageous OAPI system this accession is a real success.

Among the applicants, we can notice a strong presence of companies specialized in cosmetics, pharmaceuticals and food supply, which are currently the most growing markets in Africa.

In this way, the following are the consequences that we can draw from this success:

1. Considering the high number of applications recently made before the OAPI, applicants should now be more vigilant and check the availability of their candidate name through dedicated searches before proceeding to the filing.

As a result, trademark availability searches should become a standard practice and should be conducted beforehand. These searches should no longer be considered as a simple concept or an optional step like it was in the past.

Furthermore, the associated costs and the deadlines are really reasonable bearing in mind the number of countries covered by the OAPI.

2. Moreover, the overload of the register will certainly increase the number of opposition proceedings, which will require adequate expertise and knowledge of the procedures before OAPI as ruled by the Bangui agreement, as well as an accurate understanding of the provisions of Madrid Protocol.

In this regard, it should be noted that the opposition proceedings in OAPI are both written and verbal. Furthermore, a successful opposition in Western Africa will be a serious win for applicants who are outside the African perimeter as legal proceedings in Africa are expensive, unpredictable, long and subjective.

3. It is essential for applicants to set up a monitoring of theirs rights either through a national way or through the Madrid system, precisely because of the significant number of new applications made before OAPI.

It is the proactive strategy of legal watch that allows applicants to be warned about the applications of their competitors who could attempt to take advantage of the success and/or reputation of their marks. Moreover, this watch also enables the applicants to be notified about fraudulent filings which might be made by your partners or local distributors.

INLEX AFRICA remains at your disposal should you need any assistance in the pursuit of your activity in Africa and will not fail to inform you of the qualitative repercussions of this accession at the time of the next assessment.