OAPI: Proposed changes to the system
The OAPI authorities recently announced significant changes to the legislation that underpins the OAPI system, the Bangui Agreement.
The OAPI member countries are: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.
The changes have only been published in French, but it is hoped that an English version will be made available shortly. In order to come into effect, the changes need to be ratified by two thirds of the OAPI members (12 countries). To date, only seven have done so. It might be some time before the changes actually become law. It is, however, important for IP owners and their advisers to be aware of these and take them into account. They are significant, especially insofar as they affect examination, opposition and enforcement.
Below, we look at the most important changes, starting with those of a general nature, and then moving on to changes affecting specific IP rights.
Changes of a general nature
Deferral of fees: It will be possible to defer the payment of filing fees by one month. If the official fee is not paid within the one-month period the application will be deemed to be withdrawn.
Substantive examination: All applications will undergo substantive examination. It is clear that this proposal will require the allocation of significant resources and we understand that some staff training is already in progress.
Appeals against rejections: The period for appealing against the rejection of an application will be two months from the date of notification.
Mediation and Arbitration: Alternative dispute resolution options will be available.
Counterfeiting, enforcement and border measures: It will no longer be necessary for an IP owner to obtain a certificate of non-cancellation before proceeding with a seizure of counterfeit goods. There will be increased sanctions for counterfeiting, and certain border measures will be introduced.
Digitisation: The process of digitisation will continue and online filing is in the pipeline.
Civil courts: It will be clear that civil courts do have the right to rule on the validity and ownership of all IP rights.
Definition of trade mark: The definition of a trade mark will be extended to include sounds, music, audio-visual signs and series marks.
Certification marks: It will be possible to register certification marks.
Goods and services: One of the oddities of the OAPI system is that, although multi-class filing is possible, goods and services cannot be included in the same application. In future this will be possible.
Priority right restoration: It will be possible to restore a priority right that has been lost due to the late filing of the priority claim or the priority document.
Divisional applications: It will be possible to divide a trade mark application at any stage before registration. Division can only relate to the list of goods and services covered by the application. Divisional applications will retain the filing date of the original application and, where applicable, the priority date.
Examination: There will be substantive examination on absolute grounds and this will include deceptiveness as to origin and genericity. There is no mention of examination on relative grounds.
Publication: An application will be published after filing.
Opposition: The opposition stage will now precede registration, and will take place after the publication referred to above. The opposition period will be three months from the publication date and it will be possible to take decisions on appeal to the High Commission of Appeal within 60 days of notification of the decision.
Claim of Ownership: A party who has prior use of a trade mark that is the subject of an application, and who feels that the applicant knew or should have known of its prior rights, will be entitled to file a ‘claim of ownership’ within three months of the publication date of the application. Where the decision is in favour of the claimant, OAPI will assign the trade mark application to the claimant. A claim of ownership right will also exist in respect of trade mark registrations, although such claims will be heard by a court of law. It will be possible to appeal any decision on the claim of ownership within 60 days of notification of the decision.
International Registrations: There is specific reference to International Registrations – this is relevant because, although OAPI joined the international registration system in 2015, there have always been serious doubts about the validity of International Registrations designating OAPI due to the fact that the Madrid Protocol was never formally incorporated into the Bangui Agreement. It is unclear, however, whether this reference will resolve the issue, as there is a strong body of opinion that International Registrations cannot be effective in OAPI until such time as all the member countries ratify OAPI’s accession to the Madrid Protocol. Meanwhile, it would be risky to use International Registrations in order to cover OAPI.
Cancellation of generic marks: It will be possible to cancel the registration of a trade mark that has, as a result of the actions of the owner of the registration, become generic.
Appeal against rejection of application for restoration: The deadline for filing an appeal against a rejection of an application to restore a trade mark registration will be extended from 30 days to 60 days from the date of notification of the decision.
Prescription for infringement: The prescription term for civil actions for infringement will be five years from the date of the infringement.
Customs Watch: There is already provision in the law for Customs Watches and customs authorities can inspect, make an inventory of, and seize shipments of goods on the authority of the President of the local civil court. In future the customs authorities will be able to detain suspected counterfeit goods on the written request of the owner or exclusive beneficiary of a trade mark registration. The trade mark owner will have a period of 10 days (three days in the case of perishable goods) from notification of the detention of the goods to launch civil or criminal proceedings.
Extension: Protection will be extended to agricultural, natural and artisanal products.
Substantive examination: There will be substantive examination of patent applications. We understand that the authorities are considering whether OAPI should partner with a foreign IP office on substantive examination (and if so, which one), recruit examiners locally, or combine the two options.
Publication / Opposition: Patent applications will be published for opposition purposes and the opposition period will be three months.
Publication / opposition: There will be publication of applications for opposition purposes. The opposition period will be three months.
Modernisation: The copyright regime will be modernised in order to comply with current conventions.
Management: Member states will be entitled to create individual management bodies for the various categories of protected works.
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