OAPI: Bangui Agreement Revisions Change the Trade Mark Registration Process with Effect from 2 January 2022

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 the registration of trade names, 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 1 January are summarized here:

• The definition of a ‘trade mark’ is expanded to now also include sound marks and audiovisual marks.
• Certification marks are now registrable in OAPI.
• Multi-class trade mark applications can now include both goods and service classes.
• 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.
• 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.
• Common law rights in trade marks 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.
• For civil actions for trade mark infringement, a 5-year prescription term has been confirmed.
• 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.
• 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.
• Geographical Indications (GIs) are protectable under the revised Bangui Agreement, and protection is extended to agricultural and artisanal products, amongst others.
• Applications for the registration of industrial designs will be published for a three month opposition term, prior to registration.

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.