ARIPO

The International Classification of Goods and Services under the Nice Agreement applies. According to the Regulations issued under the Protocol, goods and/or services belonging to several classes may be included in one and the same application. However, any designated state may declare that in such a case, the application shall result in two or more registrations. At present, only Botswana, Cape Verde, Gambia, Namibia, Lesotho, Liberia, Sao Tome & Principe and Swaziland allow multiple-class registrations.

An ARIPO registration in respect of services will not be enforceable in member states the national laws of which do not make provision for the protection of service marks; at present only Malawi does not recognise service marks.

An applicant of an application under the Banjul Protocol may claim a priority right under the Paris Convention on the basis of an earlier application filed in a Paris Convention member country not more than six months prior to the ARIPO application.

The application may be filed directly with the ARIPO office or with the trade mark office of a member state. The applicant must designate those states in which protection is required. The office where the application is lodged will examine the application as to formal requirements. If formalities are complied with, a filing date is accorded.  If the application was filed in a contracting state, the office of such state must transmit the application to the ARIPO office without delay.

The ARIPO office notifies the trade marks office of each designated state of the filing, which office must examine the application in accordance with its national laws. A national office has 9 months to inform the ARIPO office that the registration will have no effect in its territory. The basis for such a rejection is that the application does not conform to national formalities, or that the mark cannot be registered due to its nature, i.e. does not comply with substantive requirements.  If designated states do not communicate such objections within the 9 months period, the ARIPO office will accept the application and publish a notice of acceptance in the ARIPO Journal.  In the absence of opposition (see the section on Opposition below), the ARIPO office will confirm the registration, whereupon the registration will have effect in the designated states.

If the ARIPO office refuses an application, the applicant has the option of requesting, within three months of the date of receipt of the refusal, that the application be treated as a national application in any designated state.

The Protocol does not provide for oppositions to ARIPO trade mark applications. The Regulations provide that the conditions for the filing and registration of marks will be determined in contracting states by their domestic legislation. Opposition proceedings are therefore conducted in terms of the national laws of the relevant member country. It is relevant to note that the Protocol provides for the publication of a trade mark in the official ARIPO Journal to occur three times: the first publication occurs after filing the trade mark application, the second after acceptance and, finally, the third after registration.

The practical effect of this is that, in the period between the publication for the purposes of acceptance and the publication for the purposes of registration, an opposition period occurs. While the Protocol does not expressly provide for an opposition term, article 6bis:2 does state that three months after publication of acceptance, the ARIPO office shall register the mark on payment of registration fees. Effectively this means that, in the 3-month period before the publication for registration purposes occurs, a notice of opposition, setting out the grounds upon which the opposition is based, based on the national legislation in each of the relevant designated states, must be filed in each designated state, and at the ARIPO office.

A trade mark registration shall be for a period of ten years from the date of registration and may be renewed for like periods. The renewal is effected at the ARIPO office; a grace period of six months is provided for the late payment (with a surcharge) of a renewal fee.