International trade mark registrations are brilliant … unless they are not enforceable

Enforcement of International registrations in Africa

Any person who has experienced the administrative burden of seeking trade mark protection in multiple countries will welcome the possibility of filing one single trade mark application which simply designates a host of selected countries.  Assuming the countries of interest are signatories to the Madrid Protocol or Madrid Agreement, this is indeed possible.

An international trade mark registration operates through an international treaty (the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks) which allows a trade mark proprietor to seek registration of a trade mark in any of the member countries by filing a single trade mark application.

Although referred to as an international registration, it does not cover every country and the current number of member countries is 97.  As an acknowledgment to Africa Day, the focus of this article is the member African countries, namely Algeria, Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe, as well as the recent introduction of the one regional system, OAPI which includes Benin, Burkino Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

The registration of an international trade mark is to have the same effect as if that international trade mark was registered in a member country by means of a national trade mark application. Therefore, the accession of a country to the Protocol should, in theory, ensure that the system is fully functional and operational in that country and that the enforcement of the international registration in that country is assured.

However, many African countries which have acceded to the Protocol have not implemented the system by means of amending the national legislation to give effect to the system. This causes difficulty, especially in those countries which have common law systems. In common law countries, international law will generally only have an impact on domestic law if it is specifically implemented by means of domestic legislation.  

This is not a blanket case for all African countries. In fact, in many African territories, the international registration system works quite effectively.

However, the validity of international registrations in several African territories with no implemented domestic legislation is questionable. This causes somewhat of a problem as proprietors choosing to file applications in member countries in Africa are simply required to tick those countries off a list of potential countries to designate. Without implementation of domestic legislation, the Trade Marks Registries in these countries have no operating procedures or systems to deal with these applications in practice. This generally results in the failure of the Registry to substantively examine international trade marks or indeed process the applications at all.  In some cases, the Trade Marks Office simply deposits the international trade mark applications into a back storeroom without processing them.

What complicates matters further is that there is a deeming provision that if no notification of refusal is provided by the member country within a 12 or 18 month period, the international trade mark is simply deemed to be registered. However, the local laws in such country do not necessarily acknowledge or accept such deeming provision. The concern is therefore is that in many of these territories, international registrations are simply not enforceable.  Furthermore, in most instances the validity of such registrations have not been tested in the courts and there is much uncertainty surrounding whether such international registrations could be relied upon in infringement proceedings.

Moreover, it is quite common for the national Trade Marks Register to accept and register trade marks which clearly conflict with earlier international registrations because those international registrations are not captured on the local Registry.  It is also likely that in such countries, the later national registration will be given priority as the international registration is not recognised.

Whilst the advantages of a single trade mark application which designates numerous countries cannot be understated, care should be exercised by proprietors wishing to designate these territories until such time as local law has been implemented to effectively deal with the practical implications of international registrations. In the meantime, proprietors are encouraged to file national trade marks in questionable territories to protect their rights.