Changes to the ARIPO trade mark system

At a meeting held in November 2017, the member states of ARIPO agreed to certain amendments to the Banjul Protocol and accompanying Regulations. These changes came into effect on 1 January 2018.

By way of background, the ARIPO trade mark system - the designation system that allows trade mark owners to get protection in some or all of the countries listed below through a single filing - is regulated by a treaty known as the Banjul Protocol.

The most important changes are set out below:

Priority:

It is now clear that an applicant or a successor-in-title can claim priority from a foreign application.

Formal examination:

In order to be valid, an application must identify the applicant, contain a representation of the mark, and designate the states in which protection is required. If these requirements are met the ARIPO Office will allocate a filing date. If the requirements are not met the ARIPO Office will grant the applicant a two-week period to put the application in order. If the applicant fails to do so timeously the application will be refused.

Conversion:

In cases where the ARIPO Office refuses an application the applicant can, within a period of three months of the refusal, request that the application be treated as a national application in any designated state.

Substantive examination:

An applicant will be required to respond to any refusal that may be issued by a designated state through the ARIPO Office. If the applicant wishes to file an appeal or review it must also do so through the ARIPO Office. A designated state must communicate its decision in an appeal or review to the ARIPO Office within one month of issuance.

Oppositions:

An opposition can be filed at any time after publication in the Marks Journal but before registration. The opposition must be filed with the ARIPO Office. The matter is then treated as an opposition in terms of the procedures of the relevant state.

Subsequent designations:

In the case of a subsequent designation of a country, the filing date will be deemed to be the date of the earlier application, the date of the subsequent designation will be the date on which the application is received by the ARIPO Office, and the period of protection will expire on the same date as the earlier registration.

The ARIPO trademark member countries are:

Botswana, Lesotho, Liberia, Malawi, Namibia, Sāo Tomé and Principe, Swaziland, Uganda, Tanzania and Zimbabwe.

A cautionary note:

It is important to be aware that, although the ARIPO system works for patents, it has not been a success for trade marks, and very few ARIPO trade mark applications are in fact filed. There are serious concerns about whether ARIPO trade mark registrations are valid and enforceable in some of the member countries because of a failure on the part of those countries to specifically incorporate the Banjul Protocol into national law.

There are also serious anomalies: ARIPO allows for multi-class filing but some member countries do not; ARIPO allows for protection for services but one member country, Malawi, does not (a new law is in the offing but it could be years before it comes into force). We therefore strongly recommend national filings when it comes to trade marks.

We are, however, able to assist clients who do want to file ARIPO trade mark applications, and we file directly with the ARIPO Office. We also have offices in a number of the member countries.

contact us for further information

Date published: 18 January 2018
Author: Spoor & Fisher

Tags: ARIPO Banjul Protocol trade marks