It is hoped that a revision of the terms and functionality of the Bangui Agreement, subject to ratification by all member states of OAPI, will bring significant changes to the prosecution and litigation procedures in respect of trade marks, as well as OAPI’s administration of these processes.
The Administrative Council of the African Intellectual Property Organization (OAPI) had tabled an amended version of the Agreement which was signed on 14 December 2015 in Bamako, Mali. The changes would only be adopted formally once all 17 member-states ratify the proposals. Following a discussion period of about three years, OAPI then arranged for a seminar with local agents and stakeholders (October 2018) to discuss how, if ratified, the proposed changes would affect operations and improve the functionality of the regional IP registration system.
Some of the proposed amendments include:
- The current OAPI regulations do not make provision for the publication of Intellectual Property (IP) applications. However, the amended Bangui Agreement would allow for publication of applications. Insofar as patent applications are concerned, publication would be accompanied by a detailed description of the patent, the claims and drawings, should there be any. This would however not apply to international applications (PCT).
- Sound marks, audiovisual (moving), series and certification marks would be registrable.
- New provisions relating to the registration of Geographical Indicators would be drafted and implemented.
- The opposition period in terms of the current Bangui Agreement (Annex III, article 18(1) is six months from the date of publication of a mark, and this period is not extendible. In terms of the revised Agreement, the opposition period would be three months from the date of publication of a mark. It is not clear if the three months period will be extendible.
- The Bangui Agreement makes provision for a procedure that is referred to as a ‘Claim of Ownership’, which may be filed against the registration of a published mark, within a period of six months from the date of publication (i.e. within the opposition period). The claim may be filed by any person who claims to own prior rights to the mark sought to be registered (generally based on evidence of prior use of the mark within the OAPI region). The revised Agreement has also changed the period within which this claim may be filed, to three months. In addition, in terms of the revised Agreement, once the relevant mark has proceeded to registration or a registration certificate for the mark has been issued, the owner of a prior right may file a Claim of Ownership before the relevant civil court, in any member state. There is no deadline or prescribed period within which the claim may be brought before the local courts.
- In terms of the Bangui Agreement, an appeal to the Organisation’s decision in an opposition may be filed before the High Commission of Appeal, within three months from the date on which the parties are notified of the decision (Annex III, article 18(4)). In practice, the same appeal period in applicable in Claim of Ownership proceedings. In terms of the revised Agreement, the appeal period will be reduced to sixty days, from the date on which the parties are notified of the Organisation’s decision.
- The agreement expressly states that final court decisions handed down by national courts of members states, concerning the validity of an intellectual property right, have effect and are enforceable in all other member states, without an exequatur or an official confirmation of the enforceability of the decision by other member states.
There is no certainty as to when all the member states are expected to ratify the revised Agreement to bring it into law and whether any further amendments would be recommended or proposed by member states before that time.