OAPI – Amendments to the Bangui Agreement

On 2 January 2022, Annexes III, IV and V of the revised Bangui Agreement entered into force, introducing significant changes to the trade mark registration process in OAPI, and changes affecting geographical indications and industrial designs.  No changes have been promulgated in respect of patents under the revised Bangui Agreement yet, although this may well happen during the year ahead.

The key changes that entered into force since 2 January 2022 are summarized here:

• The definition of a ‘trade mark’ is expanded to now also include sound marks and audio-visual marks [Annex III, Article 2(c) and (d)].
• Certification marks are now registrable in OAPI [Annex III, Article 2(3) and Section III].
• Multi-class trade mark applications can now include both goods and service classes [Annex III, Article 10].

• While the Registry’s trade mark examination practice remains focused on formalities and absolute grounds (no relative examination occurs and marks are therefore still not to be assessed for similarity with prior marks on record), trade marks will now be published for a 3-month opposition period after examination.  After the grant of a registration, a mark will be published again to notify third parties of the grant of rights, while not allowing for oppositions to be filed post-grant [Annex III, Article 14-15 and Article 21].It is now possible to divide multi-class applications, for instance, to overcome a provisional refusal where a mark was refused in only some of the classes, to divide the application and allow the mark to proceed to registration in the other classes where no objections were raised [Annex III, Article 17].
• Common law rights in trademarks are now formally recognized in OAPI, and a third party is entitled to file a so-called ‘claim of ownership objection’ during the opposition period on the basis of prior use made of a mark. If the opposition succeeds on this basis, the Registry will assign the trade mark application for to the successful claimant [Annex III, Article 16].
• For civil actions for trade mark infringement, a 5-year prescription term has been confirmed [Annex III, Article 56].
• The validity and enforceability of International Registrations designating OAPI via WIPO’s Madrid system are now formally recognized in the Bangui Agreement. Some question marks remain however, as not all of the OAPI member states have ratified OAPI’s accession to the Madrid Protocol as of yet.  Until such time as they do, it remains the recommended approach for brand owners to secure national trade mark registrations in OAPI [Annex III, Article 25].
• Counterfeit products can be detained by customs authorities on the basis of an OAPI trade mark registration. Trade mark owners can launch criminal or civil proceedings within 10 days from the detention or seizure of suspected counterfeit products [Annex III, Article 50-52].
• Geographical Indications (GIs) are protectable under the revised Bangui Agreement, and protection is extended to agricultural and artisanal products, amongst others [Annex VI].
• Applications for the registration of industrial designs will be published for a three-month opposition term, prior to registration [Annex IV, Article 13].

A new schedule of official fees was issued by the OAPI Registry, which is also effective from 1 January 2022.  The most pertinent updates relate to trade mark filing fees which allows for a slightly reduced official filing fee, but the official filing fee no longer includes up to three classes on filing.  Official filing fees are now payable for filing a mark in each class of interest including for the second and third class where multi-class applications are concerned.

The Registry further issued new Administrative Instructions, which introduces a new format of official trade mark filing confirmations issued by the Registry.  Also, the Registry informed that it is making good progress towards the establishment of an online e-filing system and related procedures, which may be implemented during 2022. The official fees for filing and publication of a trade mark application in one class (product or service) will be 360,000 FCFA (approximately ¥71761.04) and 75,000 FCFA (approximately ¥14950.22) for each additional class. The official fees for a priority claim remain unchanged (i.e. 75,000 FCFA (approximately ¥14950.22). OAPI will no longer be charging an additional official fee in respect of a colour endorsement

In addition, OAPI has issued a new schedule of charges for industrial designs. The new schedule includes official fees in respect of filing opposition, surcharges for multiple designs, a special fee for an application supported by a specimen and official fees for filing divisional design application.

A further seminar will be held in January 2022, to assess the implementation of these new provisions and make adjustments if necessary.[1] The implementing regulations have not yet been made publicly available.

[1] Press release on 61^st AGM and amendments – http://www.oapi.int/index.php/en/component/k2/item/676-seminaire-d-impregnation-sur-les-innovations-de-l-accord-de-bangui