Algeria joins the Madrid protocol but not implementing legislation

On 31 July 2015 Algeria deposited its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The Madrid Protocol will come into force in Algeria on 31 October 2015.

Algeria’s accession was accompanied by the declaration referred to in Article 5(2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified to the International Bureau after the expiry of the 18 month time limit.

Algeria acceded to the Madrid Agreement in 1972 and has now also acceded to the Madrid Protocol. WIPO has described Algeria’s accession to the Madrid Protocol as a “milestone for the Madrid System and its users”.

In theory, Algeria’s accession to the Madrid Protocol means that all international trade mark registrations will be governed by the Protocol. More importantly, it means that brand owners who are nationals of or domiciled in any Madrid member country (or who have real and effective places of business in any Madrid member country) can now obtain trade mark protection in Algeria and the 94 other territories that are party to the Madrid Protocol by filing a single trade mark application.

As mentioned above, the Madrid Protocol is due to come into force on 31 October 2015 in Algeria. However, the governing trade mark legislation has not been amended to effect to the provisions Madrid Protocol. At this stage, we understand that there are no immediate plans to amend the current legislation or implementing regulations to give effect to the provisions of the Madrid Protocol.

Whilst Algeria’s accession to the Madrid Protocol may be seen as a milestone, the effectiveness of the protection of international trade mark registrations in Algeria remains uncertain in the absence of implementing legislation. Algeria is one of many African countries, which has joined the Madrid System, but has not amended its national legislation to give effect to the system.

Algeria is considered to be a so-called First-to-File-jurisdiction where common law rights arising from use are not always respected and enforceable by the Courts. It is therefore of vital importance for brand owners who are commercially active in this jurisdiction to secure valid and enforceable registrations for their trade marks before unrelated third parties proceed to do so.

In light of the above, we urge trade mark owners to err on the side of caution and continue to file national trade mark applications in Algeria, until the governing trade mark legislation has been amended to give effect to the Madrid Protocol.

patent attorney pretoria
Alexis Apostolidis
Partner | Patent Attorney
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