A brief review of the Madrid International Registration system and its application in the OAPI member states

Authors

Juletha-Marié Dercksen
A candidate trade mark attorney and Doctor of Laws, with an interest in intellectual property and...
Adré Pretorius
An unconventional and practical trademark attorney.

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When OAPI initially joined the Madrid System in 2015, there was a lot of uncertainty regarding whether IRs filed in terms of the Madrid System and designating OAPI are enforceable in the OAPI member states. In order to ensure that the Madrid Protocol is binding on the OAPI member states and that IRs are indeed enforceable, two requirements needed to be met: the Bangui Agreement had to be amended to specifically address the matter of the Madrid Protocol and IRs, and these amendments had to be ratified by the national assemblies of 12 out of the 17 member states.

The Bangui Agreement was amended on 14 December 2015 to make particular reference to the Madrid System and IRs (the revised Agreement and specific Annexes came into force in 2020, and Annexes III, IV and V came into force in 2022).

Further, on 31 October 2019 Cameroon became the 12th member state to ratify the Agreement, resulting in the amened Bangui Agreement now being in force and binding on all seventeen member states. The effect of this is that IRs filed in terms of the Madrid System and designating OAPI should be enforceable in all the OAPI member states.

This is a significant change that can simplify the process for obtaining trade mark protection in the seventeen OAPI member states, and also opens up the possibility of registering an IR to individuals and companies in those countries. It should however be noted that although the law is clear, in practice this is still a grey area as not all of the OAPI member states have ratified OAPI’s accession to the Madrid Protocol as of yet. The relevant procedures at the Registry are also still being finalised and Registry staff are being trained in the processing of IR applications.

 

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