The international trade mark registration system (known as the Madrid

system) is administered by the World Intellectual Property Organization (WIPO) based

in Geneva, Switzerland.  It is considered

to be a one-stop solution for the registration and management of trade marks

worldwide.  Brand owners from Madrid

member countries can file one application, in one language and pay one set

of fees to protect a trade mark in up to 114 countries (comprising 80% of world

trade – and growing). How effective is Madrid in Africa?

The international trade mark registration system

(known as the Madrid system) is administered by the World Intellectual Property

Organization (WIPO) based in Geneva, Switzerland.  It is considered to be a one-stop solution

for the registration and management of trade marks worldwide.  Brand owners from Madrid member countries can

file one application, in one language and pay

one set of fees to protect a trade mark in up to 114 countries (comprising 80%

of world trade – and growing).

International (Madrid) Registrations allow for

the centralized management of trade marks.

Licenses, registered users, changes

of ownership and limitations of specifications of goods/services can be recorded

in the International Register through a single procedural step.  The system is also flexible enough to cater

for the licensing of rights or the transfer of ownership in a mark for only certain

of the designated countries or for only some of the goods or services, or to

limit the registered specification in respect of only some of the designated

parties.  The geographical scope of an

existing International Registration may be extended in the future by designating

additional countries – even countries which only become Madrid members at a

future point in time.

The Madrid system is available to a natural

person who is a national of or domiciled in a Madrid member country or a legal

entity which has a real and effective industrial or commercial establishment in

a Madrid member state or region.

An International Registration needs to be based

on a pending application or existing registration in a Madrid member country at

the so-called ‘Office of Origin’ where that base application/registration is on

record.  The national IP office will

examine the application for the International Registration as to formalities

only (i.e. whether the application for the IR corresponds with the base

application/registration insofar as the mark, specification, ownership and

other details are concerned) and, if found to be procedurally correct, the

Registry will communicate the application to WIPO’s International Bureau in

Geneva.  WIPO will examine the

application for compliance with the requirements of the Madrid Protocol, which

examination is also restricted to formalities only. If there are no

irregularities with the application, the International Bureau will record the

mark in the International Register; publish the International Registration in

the WIPO Gazette of International Marks and notify each designated member

country.  At this stage, no substantive

rights have arisen.

Any matter of substance, such as whether the mark

qualifies for protection or whether it conflicts with an earlier mark in a

designated member country will be determined by that country’s national trade

marks office in terms of applicable domestic legislation.  Any objection or opposition to the grant of

the International Registration has to be communicated to WIPO by the national

trade marks office within the strict, prescribed time limit allowed for in

terms of the Madrid system (12 – 18 months, depending on the jurisdiction

concerned), otherwise the International Registration will be deemed to be

granted and effective by WIPO and the owner of the trade mark.

1. Which

African countries are Madrid members?

The following thirty seven (37) African countries

are Madrid members:

Algeria, Botswana, Egypt, Gambia, Ghana, Kenya,

Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI (The African

Intellectual Property Organization, including the following member states:

Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoros

Islands, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau,

Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo), Rwanda, Sao Tome and

Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

2. How

effective is the Madrid trade mark registration system in Africa?

2.1 Recognition of International

Registrations in terms of national laws

Of the 37 countries mentioned above, only nine (9)

have properly “domesticated” the Madrid Protocol through appropriate amendments

to their national trade mark legislation, together with the implementation of enabling

regulations, namely Botswana, Gambia, Ghana, Kenya, Liberia, Morocco, Mozambique,

Tunisia and Zimbabwe. Even in these nine

countries, practical issues exist with the processing of International

Registrations which are discussed in more detail below.

One of the core issues with the national

applicability of IP treaties such as the Madrid Protocol is that additional

direction, procedures and mechanisms need to be put in place, on a national

level, to ensure that the national IP Office is equipped to deal with and

process International Registrations and also how to deal with objections, oppositions

and so forth. Even national trade mark

legislation is not considered to be enacted properly until the so-called

‘enabling regulations’ have been promulgated. Enabling regulations supplement

and complete trade mark legislation by formally determining the processes and

procedures through which the provisions of the legislation can be practically

implemented and fulfilled by the national trade marks office concerned.

Apart from procedural issues, it is important

that national laws clearly recognize that International Registrations shall have

the same force and effect as national registrations.  Without such express recognition, it will be

up to the national courts to determine whether the rights arising from an

International Registration should trump rights arising from national common law

(in countries where common law rights arising from trade mark use are formally

recognized) or prior trade mark registrations.

IP litigation is a growing practice area in

Africa, but in virtually all of the African Madrid member countries, national

Courts have not decided on many IP matters and precedents are few and far

between.  More often than not, the

presiding judge or adjudicator will not have the benefit of earlier judgments to

rely upon when hearing and ruling on a dispute which may revolve around the

national enforceability of an International Registration.  The presiding official may not even be

experienced in IP law to begin with.  In

a country where no formal domestication has occurred, the judge may find no

reference to the Madrid system in the national IP laws whatsoever and this may

pose a level of risk to the successful outcome of a litigation matter in the

favour of the owner of an International Registration.

When involved in a trade mark dispute in a

country where the Madrid Agreement or Protocol has not yet been domesticated,

any IP-litigator would prefer to be able to rely upon nationally recognized

statutory rights, rather than have to make constitutional arguments based on the

applicability of international treaties through analysis of international law.

To illustrate how the lack of proper

implementation of the Madrid Protocol can lead to difficulties arising on a

national level, we now turn to some key African jurisdictions where the

validity and enforceability of International Registrations remain in question.

In Ghana, full legal recognition was given to

International Registrations in terms of a 2014-Amendment Act, but unfortunately

this recognition was not implemented with retrospective effect, which casts some

doubt over the validity of International Registrations designating Ghana from

2008 (when Ghana became a Madrid member) to 25 July 2014 (the date of enactment

of the Amendment Act No. 876 of 2014).

In Algeria, a 2005-Amendment Act did make brief

mention that trade mark registrations obtained through international treaties

(to which Algeria is a member country) will be valid and enforceable.  No specific mention is made of the Madrid

Protocol however and no regulations were enacted to inform the Registry how to

process International Registrations or how to manage objections or possible

oppositions.

In Egypt, national laws have not been properly

amended and no enabling regulations implemented.  Although the Egyptian Registry has been

accepting and processing International Registrations for many years, their

enforceability against conflicting national registrations still has to be

tested in their Courts.

In the regional

system of OAPI, the Administrative Council (of the multi-country organization)

ratified the Madrid Protocol unilaterally and on behalf of the organization’s

17 member countries in March 2015.  An

amendment of the underlying Bangui Agreement was never attended to and uncertainty

regarding the enforceability of Madrid marks designating OAPI exists.

2.2 Practical difficulties

2.2.1 Most

Madrid members in Africa cannot process applications within WIPO’s timelines

Most

African trade marks offices battle with logistical issues that have led to the

development of crippling backlogs of cases which stretch back for many years.  As the records of most Registries have not

yet been fully digitized, some of their records

are contained in Register manuals.  In

such instances, current status information can only be confirmed from the

official file for a pending matter, which is often not immediately available.

Another

hindrance is the lack of the regular publication of Trade Mark Journals (in

some African Madrid member countries, an entire year could pass without a

single publication occurring), which leads to backlogs of marks awaiting

publication forming which can also stretch back for years.

One of

the core obligations placed upon national trade marks offices through the

Madrid system is that designations in terms of International Registrations

should be examined in a specific time frame (a standard time frame of 12 months

applies, which is extendable to 18 months upon application).  If the national trade marks office of a

designated member country does not notify WIPO of an objection or opposition to

the registration of a mark within the mentioned time frame, WIPO and the owner

of the International Registration will consider the mark to be registered and

enforceable in that member country.

Unfortunately,

most African registries are incapable of complying with WIPO’s timelines for

the processing of applications within 12 – 18 months.  Situations have therefore arisen where a

national registry communicates an objection or opposition after the prescribed

notice period expired has expired and by that time, WIPO no longer entertains

such communications.  In such instances,

WIPO and the brand owner believe that a valid registration was secured but in

reality, the local Registry may have refused and removed the mark from the

national register – without even communicating this properly to WIPO.  Several such instances have arisen in

jurisdictions, including Kenya and Mozambique where the Madrid system is deemed

to function efficiently and where the Registries’ records are mostly

computerized.

2.2.2 A

lack of user confidence and training on WIPO’s IPAS system

Before a

country accedes to the Madrid Protocol, WIPO will typically assist the IP

Office with the initialization of the process to digitize their records and

they would implement their database management system, known as the Industrial

Property Automated System (IPAS) which links the Registry’s digital database

with WIPO’s systems.  This enables WIPO

to upload all data relating to International Registrations on their systems in

Geneva and to synchronize their database with those of designated member countries.  This reduces the risk of user error which

could occur when staff at national Registries input data relating to

International Registrations.

While

this is a positive step to take, the difficulty is that the Registry officials

in many African member countries often revert back to their previously utilized

systems and manual records as a result of a lack of training on the electronic

IPAS systems and difficulties in retaining skilled staff members and a

resultant lack of user familiarity with WIPO’s systems at the Registries.  This does not bode well for the processing of

Madrid designations, which depends largely upon the proper operation of the

IPAS system at designated Trade Marks Offices.

Of course, this is a concerning situation as the owner of an

International Registration designating a certain African jurisdiction may in

the future, when they try to enforce their rights, find that an earlier

conflicting mark was registered on a national level and not included in the

IPAS system as the Registry reverted back to capturing national applications in

a separate register.  This could lead to

a situation where the owner of the International Registration might be

restrained from using his mark in that jurisdiction, despite the fact that he

secured a registration via WIPO/Madrid – especially in the so-called

First-to-File jurisdictions.

Although

WIPO is working hard to assist with training of Registry staff around the

continent and to improve user confidence in the IPAS and Madrid systems, the

practical reality is that operations at most registries in Africa are very

rudimentary and simply nowhere near as streamlined and efficient as in more

advanced jurisdictions in the rest of the world where the Madrid system works

well.

At most

of the Registries, the bulk of their records are still contained in manual

records, despite ongoing digitization efforts, which could take many years to

complete due to the sheer amount of records concerned.  Until the Registry’s records in an African

Madrid member country have been fully digitized to ensure that Madrid

designations are examined and compared with existing, similar marks on the

national register, it remains recommended for trade mark owners to secure

national registrations for their marks.

Especially when considering that many African (Madrid member) Registries

are (according to WIPO) found to be reverting back to their formerly utilized

and manual records due to various reasons.

To further

compound these issues, knowledge of the procedural operation of the Madrid system

has been found lacking at Registry level in many jurisdictions.  A lack of understanding of examination and

opposition deadlines has led to many instances of confusion and

miscommunication between the national trade marks offices and WIPO which, in

turn, leads to situations where the holder of an International Registration is

unaware that his rights were challenged successfully on a national level.  This has led to an increase in national

filings in many Madrid member countries as international brand owners come to realize

(after costly and risky litigation proceedings) that it remains the first prize

in Africa to establish presences on the national registers for their core

brands.

2.2.3

Practical examples

Some

practical examples of situations leading to uncertainty and difficulties are

set out below.

In Ghana,

the Trademarks (Amendment) Act, 876 of 2014 entered into force in July of 2014,

properly recognizing the Madrid Protocol in terms of its national

legislation.  Reports were received that

the Ghana IP Office was not aware of the publication of the Amendment Act and Madrid

applications were not processed or recorded properly for quite some time.  Some doubt exists as to the validity of

International Registrations designating Ghana between 2008 (when Ghana ratified

the Madrid Protocol) and July of 2014 as the Protocol was not enacted with

retrospective effect.  WIPO confirmed

that the Ghana Registry had not communicated a single objection to an International

Registration designating Ghana by December of 2014.  There is a concern that the Registry did not

examine these International Registrations properly; that the registrations were

granted by default and that they would not be enforceable.  Also, there is a concern that International Registrations

were not properly captured on the records of the Ghana Registry as no

regulations existed before July 2014 which informed the Registrar and his staff

how to deal with Madrid applications.  To

compound matters, the Ghana

Registrar recently admitted that his office is not able to examine marks

routinely within WIPO’s deadlines and he expressly reserved the right to refuse

international registrations outside of WIPO’s timelines.  We are aware of situations where this has led

to international registrations being refused or opposed outside of WIPO’s

timelines and an owner of an international registration covering Ghana being

left without any enforceable statutory remedy against infringement.

In

Botswana, where appropriate legislative and regulatory amendments have been

made to fully recognize international (Madrid) registrations, the Registrar of

Trade Marks confirmed to WIPO at a workshop held in Gaborone in 2016 that they

have not examined any of the 8 000 Madrid designations received in terms

of the Madrid Protocol since Botswana became a member country in 2006.  The Registry officials were not sure how to

examine and process these applications and simply allowed them to become

registered by default.  The IPAS system

was ignored by Registry officials and they went back to capturing new records

in their Register books.  Additionally,

once the Botswana Registry finally began uploading records onto the IPAS system

in September 2016, they communicated in January 2017, that somehow all of the

data that was entered and updated on the IPAS database has been lost.

In Gambia, the Registrar of Trade Marks recently

confirmed that, due to backlogs of pending trade mark applications which

stretch back until the early 1990’s, the current examination timeline in Gambia

is 26 months. The Gambian Registry

clearly is not able to meet the strict 18-month examination timeline of the

Madrid Protocol and it is expected to take many years before they might be in a

position to do so. The bulk of the

Registry’s records are not computerized and Journal publications appear only

once or twice a year (some years not at all). In this jurisdiction, it is likely that international registrations may

only be examined outside of WIPO’s timelines and possibly refused or

successfully opposed at that time, which could leave the owner of the

international registration with the mistaken impression that they secured

statutory and enforceable trade mark rights in Gambia.

If the

system is not functioning properly in African countries where appropriate legal

amendments have been made and where the Registries are considered to be

efficient (such as Kenya and Mozambique), no real user confidence can be

established in other countries such as Lesotho, Madagascar, Namibia, Rwanda,

Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Zambia where records

remain largely non-digitized and where appropriate legal amendments are still

outstanding and where Registries’ records are not yet computerized and they are

struggling to cope with administrative backlogs stretching back several decades.

An

additional cause for concern is that many African countries are considered to

be so-called ‘First-to-file-jurisdictions’ where common law rights (arising from the use of a

mark in trade) are not formally recognized and where the first party who

successfully registers a mark gains exclusive rights to the use of that mark,

notwithstanding that another party may have been using the mark in trade prior

to the registration of the mark.  In

these jurisdictions, it is vital for brand owners to ensure that their valued

trade marks are registered on a national level.

We are aware of instances where the owners of international (Madrid)

registrations were under the mistaken impression that they secured enforceable

rights in some of these jurisdictions, only to discover at a later stage (when

they try to enforce their marks) that the national IP office allowed an

opposition or that the Registry refused their mark outside of WIPO’s timelines

and that they in fact do not have enforceable rights.  To compound the issue, third parties (including

local distributers, in some instances) have gone ahead and registered their

marks locally, leading to costly and complicated legal battles to regain control

of their brands from third parties.  Just

as anti-counterfeiting is a scourge of commerce in African trade, so is the

adoption of established brands by unauthorized third parties. The following countries in Africa are

considered to be First-to-File countries:

Algeria, Angola, Djibouti, Egypt,

Ethiopia, Lesotho, Liberia, Libya, Madagascar, Morocco, Mozambique, OAPI

(Cameroon, Central African Republic, Chad, The Republic of the Congo, Comoros,

Benin, Gabon, Ivory Coast, Mauritania, Mali, Guinea, Niger, Senegal, Togo,

Burkina Faso (formerly Upper Volta), Guinea-Bissau and Equatorial Guinea), South

Sudan, Sudan, Swaziland and Zambia.

3. Conclusion

The

bottom line is that the Madrid system does not function as efficiently and

effectively in Africa as in other parts of the world where Registries have

clear legislative mandates and regulatory guidance on how to process

International Registrations, not to mention more developed trade mark laws;

digital records; the regular publication of Marks Journals and streamlined registration

systems.  Also, in Africa, most countries

are at differing stages of economic and legislative development and a one-stop

solution which might work in a region such as the EU, where the member

countries have similar laws and stages of development,  will not necessarily be a workable solution in

Africa.  It will take many, many years

before most of the African Madrid member countries have successfully digitized

their records; implemented appropriate legislation and regulations to give full

force and effect to Madrid registrations; improved examination and publication

timelines; addressed issues relating to the retention of skilled staff members;

dealt with their existing backlogs of cases and have established the efficient,

streamlined and effective trade mark registration systems which are necessary

for them to comply with their obligations in terms of the Madrid Protocol.  WIPO has identified that some African Registries

revert back to their previous systems (including the keeping of manual Register

books in preference to WIPO’s digital IPAS database system) which effectively results

in the establishment of two separate registers (one national register which is

updated manually and the IPAS database that receives data from WIPO).  As it stands, brand owners take a risk when

relying on the Madrid system when attempting to secure enforceable trade mark

rights in Africa.

by Stephen Hollis | Partner, Adams & Adams

Contributions by Simon B. Brown (Partner) and Megan Moerdijk (Partner)