THE MADRID SYSTEM IN AFRICA
The Madrid System for the International Registration of Marks comprises the Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to the Madrid Agreement adopted in 1989 and entered into force on December 1, 1995. It is administered by the International Bureau of the World Intellectual Property Organization (hereinafter referred to as WIPO) which maintains the International Register of Marks and publishes the WIPO Gazette of International Marks.
The System of international registration of trade marks has two primary objectives:
(i) Facilitating the obtaining of protection for both trademarks and service marks; and
(ii) Facilitating easier subsequent management of trademarks and service marks.
The Main advantages of the Madrid Protocol are as follows:
- one application;
- in one place;
- with one set of documents;
- in one language;
- with one fee;
- resulting in one registration;
- with one number;
- and one renewal date;
- Covering more than one country.
To achieve these objectives the System allows for a centralized filing procedure, in one language, with one set of applicable rules and fees paid in one currency (Swiss francs). It is argued that this centralized filing procedure provides trade mark and service mark owners, agents and national registration authorities with a simple cost-effective and efficient way to ensure protection for marks in other countries through the filing of a single application with WIPO.
The following African countries are members of the Madrid System: Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Swaziland, Sudan, Tunisia, Zambia, and Zimbabwe. Additionally in 2015, The Organisation Africaine de la Propriété Intellectuelle (OAPI), became a member of the System. This means that all 17 member states of OAPI (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo) are now also open to be designated as a part of a Madrid Protocol application.
However, there are some major African countries who are still not party to the Madrid System; Nigeria, Angola and South Africa have not joined the System and there doesn’t seem to be a great desire amongst government policy makers and IP agents in those countries to accede to the Treaties which form the System. This reluctance seems to be driven by the fear of a loss of revenues for both the local Trademark offices and local agents. This is a fear that has also meant a similar lack of take up of the Madrid System in other jurisdictions such as the Caribbean and Latin America.
We would caution potential clients about using the Madrid System in Africa. This is primarily as a result of the lack of clarity as to the legislative and procedural mechanisms being put in place in some of the countries so as to ensure that a Madrid System application can be effective and/or valid.
Our advice would be to seek advice as to which countries might have an effective legal and procedural implementation of the Madrid System in order to ensure a successful application using said System.
In some circumstances it might still be best to pursue a national application outside of the Madrid System rather than to risk the uncertainty that is present in some jurisdictions.
Please feel free to contact us to discuss this and any other related matters.