The international trademark application system is regulated by means of two different Treaties, namely the Madrid Agreement of 1891 and the Madrid Protocol of 1989. The Treaties form the Union of Madrid, a special union established according to article 19 of the Paris Convention, which determines that “(…) the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property (…)”. The Madrid System, which is formed by the contracting parties of both treaties, is regulated by the World Intellectual Property Organization (WIPO).
The differences between both Treaties may be summarized in a few points.
Firstly, the accession to the Madrid Agreement is exclusive to the contracting parties of the Paris Convention, on the opposite of the Madrid Protocol that shall be able to also be accessed by a member of an Intergovernmental Organization.
Secondly, the Madrid Agreement determines that the international application comprises a trademark registration whereas in the Madrid Protocol a trademark application should be sufficient.
The territorial extension also differs in both instruments, as in the Madrid Agreement the Contracting Parties may declare that the international registration shall not be effective to their territories, unless the applicant expressly requests for such protection, which does not occur in the Madrid Protocol that determines that the protection shall only be extensive to a contracting party in the circumstance the applicant of the international trademark application or registration requests so.
The Madrid Protocol also comprehends two more innovations in comparison to the Madrid Agreement, particularly the deadline applicable to refuse the protection of the trademark in case of opposition that may be done for 18 months, whereas in the Madrid Agreement the applicant only has 12 months to do so. Additionally, the refusal of an international registration may be transformed into a national application and the international date shall not be affected as a priority date, which is not foreseen in the Madrid Agreement.
Despite the differences between both Treaties and the fact that the Madrid Protocol determines important innovations in comparison to the Madrid Agreement, certain is that the system provided by both legal instruments is of extremely importance, determining that with only one application the protection may be effective in a set of different countries, avoiding costs and speeding up the registration process, particularly in countries where the trademark offices and the registration process are not as effective as in more developed jurisdictions, which is what happens in Africa, which effectiveness and efficiency shall be analysed hereinafter.
Africa has always been known for its natural richness, which resources made this Continent one of the most popular to explore. However, its natural characteristics and the majority of the social problems affecting the African countries made the progress and development extremely difficult. Nevertheless, the will to overcome this situation has led the countries to search for a system of unification. The protection of the intellectual property is one of the examples of such unification between the African countries and therefore, Conventions such as the African Regional Intellectual Property Organization (ARIPO) or the African Intellectual Property Organization (OAPI) clearly demonstrate the empowerment of the African collectivism.
For this reason, the accession to the Madrid Agreement and the Madrid Protocol by the African countries became a priority by the majority of these and therefore, the Union of Madrid currently comprises the following African countries: 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. The Union is also integrated by OAPI, which, similar to Gambia and Zimbabwe, have only accessed the Treaty in 2015 and which comprises Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo.
According to the list of countries that integrate the Union of Madrid, it is possible to affirm that only few countries in Africa do not allow the international trademark application through one of the Madrid Treaties, which reasons for non-accession are, in most of the cases, economic related. Indeed, countries such as Angola, Nigeria or South Africa, reluctantly avoid to access to the Madrid System, due to the fact that handing over the competence of trademark applications to an international organization may consist in fewer income to the country, namely by way of less official fees collected by the Trademark Offices, which are generally governments entities and less work and therefore income to the national IP Agents in the country.
Even though the majority of the African countries are contracting parties of the Madrid System, the effectiveness and efficiency in some of the jurisdictions are not clear, either because the Offices have not adopted the necessary procedures to implement the system, either because the Governments have not changed the national legislations that allow the possibility to file international applications, or simply because of the unawareness from the Offices regarding the matter.
An individual analysis regarding the implementation of the Madrid Agreement and Protocol, will lead to the conclusion that jurisdictions such as Botswana, Egypt, Kenya, Madagascar, Mozambique and Sao Tome & Principe have the system implemented and fully functioning, meaning that these states may be designated by applicants with the certainty that the registration proceeding shall be effective.
On the contrary, there are other African countries that still face some difficulties in the application of the international trademark system such as Algeria, Gambia, Ghana, Lesotho, Liberia, Morocco, Namibia, Rwanda, Sudan, Sierra Leone, Swaziland, Tunisia, Zambia and Zimbabwe, even though, in most of the cases, the IP Agents in the area expressly refers that the system is in force and that the designation of the country upon an international trademark application shall be possible.
A particular situation that has been highly discussed is the implementation of the Madrid Protocol by OAPI, which have only accessed the Treaty last year. Indeed, many have been the critics and controversy around this matter specially the alleged competence of the Administrative Council of OAPI, which was an organization created by an agreement between the states - the Bangui Agreement - to access to an international organization and to enforce the international system to sovereign states, which should be the ones with the ability to do so. The movement against this situation by IP stakeholders have been so significant that the possibility of an eventual court challenge is on the table. If this happens to be the situation, the discussion of OAPI’s accession to the system shall have to be further analysed. Notwithstanding the position of the majority of the IP agents in these countries, certain is that when asked if it is possible to designate the OAPI upon an international trademark application, the Organization does not fail to answer affirmatively.
Moreover, the discussion regarding the potential self-execution of the Madrid System have always been a controversial matter. In fact, the question is raised in relation to the so-called “common law countries”, in which international agreements, such as the Madrid Agreement and Protocol, shall only become effective once these are implemented in the national law. This matter has been discussed following the accession of Zimbabwe to the Madrid Protocol, which has not yet incorporated the system into the national law, even though it is possible to affirm that the Protocol is in force in this jurisdiction.
All things considered, the question that remains to be answered is why has it been so difficult for some countries in Africa to implement the Madrid System when there are successful examples of regional systems in force in Africa, such as OAPI and ARIPO? Considering that the international trademark system intends to reduce the complexity of the procedures, to reduce the costs and to obtain the registration of trademarks in more countries in a shorter period of time, why has it been so difficult for some countries to bring the system into force?
Despite the reasons behind the lack of effectiveness and efficiency of the international trademark system in Africa, the path to the applicability and harmonization of the system shall be overcome by raising awareness to the importance of the system to the African countries that are dealing with more difficulties in applying the system, provide training to the staff of the national offices and to expect that the governments take action by way of changing the national legislations in order to incorporate the system.
The international trademark system in Africa still has a long way to go and once all African countries find a way to harmonize the procedures, there will be space for development and success. Until then and whilst there is no certainty in relation to the effectiveness and efficiency regarding the Madrid System, it shall be important for stakeholders to find a suitable strategy to protect trademarks in Africa, particularly by way of analyzing the viability of filing a national application instead.