Any party which has dealt with the administrative burden of seeking trademark protection in multiple countries will welcome the possibility of filing a single trademark application which designates a host of selected countries. Provided that the countries of interest are signatories to the Madrid Protocol or the Madrid Agreement, this is possible.
An international trademark registration operates through the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, which allows a trademark owner to seek registration of a trademark in any member countries by filing a single trademark application.
Although referred to as an 'international registration', it does not cover every country – at present, 97 countries are signatories to the Madrid Protocol. In Africa, the following countries are members: Algeria, Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe. In addition, the Organisation Africaine de la Propriété Intellectuelle recently joined, covering Benin, Burkino Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
The registration of an international trademark has the same effect as if that trademark had been registered in a member country through a national trademark application. Therefore, in theory the accession of a country to the protocol should ensure that the system is fully functional and operational in that country and assure enforcement of the international registration in that country.
In many African territories the international registration system works effectively. However, many African countries which have acceded to the protocol have not implemented the system by amending national legislation. This causes difficulties, especially in countries with common-law systems. In common-law countries, international law will generally have an impact on domestic law only if it is specifically implemented by means of domestic legislation.
The validity of international registrations in several African territories with no implemented domestic legislation is questionable. This causes issues as trademark owners filing applications in African member countries are simply required to select those countries from a list of potential countries to designate. Without the implementation of domestic legislation, the trademarks registries in these countries have no operating procedures or systems to deal with applications. This generally results in the failure of the registry to examine international trademarks substantively or to process the applications at all. In some cases, the trademark office simply deposits the international trademark applications in a back room without processing them.
To further complicate matters, a deeming provision states that if no notification of refusal is provided by the member country within 12 to 18 months of filing, the international trademark is deemed to be registered. However, the revelant national laws do not necessarily acknowledge or accept this provision. Therefore, in many of these territories international registrations are unenforceable. Further, in most cases the validity of such registrations has not been tested in court and there is much uncertainty surrounding whether such international registrations could be relied on in infringement proceedings.
Moreover, it is common for national trademarks registries to accept and register trademarks which clearly conflict with earlier international registrations because those international registrations are not listed with the local registry. It is also probable that in these countries the later national registration will be given priority as the international registration is not recognised.
While the advantages of a single trademark application designating numerous countries cannot be understated, care should be exercised by trademark owners wishing to designate these territories until local laws are implemented to deal effectively with the practical implications of international registrations. In the meantime, trademark owners should file national trademarks in difficult countries in order to protect their rights.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.