ARIPO – Amendments to the Banjul Protocol on Marks and Its Implementing Regulations

The Administrative Council proposed and adopted amendments to the Banjul Protocol on Marks as well as its Implementing Regulations at their Extraordinary Session and Ordinary Session that was held during the latter part of 2021. The following amendments came into force on 1 January 2022:

Section 6bis which refers to the Publication and Registration procedures has been amended. Firstly, Section 6bis: 1 has been amended to provide for the provisional acceptance of applications. According to Section 6bis:1(a), if after the 9-month examination period the Designated State has not communicated that the designation has either been accepted or refused, i.e., no communication was made by the Designated State, the application will be published in the Marks Journal as being provisionally accepted by the Designated State. Section 6bis:1(b) has been added, which now allows for the Applicant to request the early publication of the application after the notice of acceptance has issued. The early publication request will attract an additional fee. Section 6bis:1(c) has also been added and makes provision for the publication of applications that have been refused by the designated state. The refusal will now be published in the Mark Journal as refused or conditionally refused

Section 6bis:5 is a new section in the Protocol. This section requires the Applicant to pay the registration fees 12 months after the application has been published, failing which the application shall be treated as withdrawn. The Implementing Regulations have been amended (Rule 11bis:3) in order for the Office to notify the Applicant that payment of the registration fees is required. If after 2 months of such notification the Applicant fails to comply with the requirement, the application will be refused.

Section 10.3, which relates to time limits, has been added to the Protocol. This Section specifies that if an applicant fails to honour a time limit (in the Protocol, Regulations or Administrative Instructions) and no extension of the time limit has been requested, the application or registration shall be deemed lapsed 1 month from the date the time limit expires. This section is applicable irrespective of the application or registration’s validity. Applicants should therefore take cognisance of any specified time period in order to keep their application or registration alive.

Further, Rule 13bis of the Implementing Regulations now requires the Applicant to submit a written declaration to the Office, together with the prescribed fee, if they wish to cancel some of the designated states.

Lastly the filing form (No.M1) has been amended to include a section “Declaration of Intention to Use or Actual Use” requesting the Applicant to indicate if the mark is currently being used (at the time of filing) in one or more of the designated States, or if the Applicant has an intention to use the mark in the designated states.

The Notification of Amendments to the Banjul Protocol can be downloaded from ARIPO’s website.