The Trade Marks Registry of the African Intellectual Property Organization (OAPI), based in Cameroon, announced recently that the 11th edition of the Nice Classification system is to be applied when filing new trade mark applications in OAPI.
OAPI is a regional trade mark registration system in Africa, which can be utilised to register trade marks in one or more of the following, 17 member states:
Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, The People’s Republic of the Congo, Ivory Coast, Mauritania, Mali, Niger, Senegal and Togo.
None of the member states maintain independent trade marks offices and registers and therefore trade marks need to be registered at the OAPI Registry if statutory protection is sought in any of the member states. One registration covers all of the member countries and, although multi-class applications are possible, one multi-class application may not cover both goods and service classes.
All goods and services are classified in terms of the international Nice Classification system. Generally speaking, the practicality of the classification system lies therein that trade mark proprietors are deemed to secure statutory trade mark rights in relation to the goods/services specified in their applications and contained in the class(es) in which they have registered their trade marks.
On 1 January 2017, the International Bureau of the World Intellectual Property Organization (WIPO) published the latest edition (the 11th Edition) of the Nice Classification system and the OAPI Registry allowed trade mark applicants to utilize this version with immediate effect, while still allowing Applicants to rely upon the previous (10th) edition as well.
The Registry announced that, from 30 April 2017, all new trade mark applications which are filed at the OAPI Registry, need to conform to the latest (11th) edition of the Nice classification system on the registration of trade marks.
OAPI acceded to WIPO’s Madrid Protocol on the international registration of trade marks, and although it is possible to designate OAPI in terms of an international (Madrid) registration, it is not recommended to do so, until such time as the underlying Bangui Agreement has been amended to recognize that international registrations have full force and effect in OAPI. OAPI is considered to be a so-called ‘First-to-File-jurisdiction’, where common law and reputational rights are not formally recognized (except for well-known or famous marks as recognized for protection in terms of the Paris Convention) and where the first party to register a trade mark may be deemed to be the true proprietor thereof, despite the fact that this may not be the case. In the light of this, it is important for brand owners to secure national registrations for their valued trade marks in OAPI in order to ensure that no question marks may exist in relation to the validity or enforceability of their trade mark rights.
At the OAPI Administrative Council meeting in December 2016, Mr. Denis Loukou Bohoussou of Côte d’Ivoire, was elected to the post of Director General for a period of five years, effective 1 August 2017. Loukou Bohoussou’s predecessor, Dr. Paulin Edou Edou’s term of office ends on 31 July 2017. Under the leadership of Dr. Edou Edou, OAPI has acceded to a number of international treaties aimed at creating a modern and dynamic framework and to harmonise administrative procedures in the registration of titles.
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By Stephen Hollis (Partner) and Lebohang Mosala (Associate)