ARIPO: changes to the Harare and Banjul Protocols

At ARIPO’s 43rd Administrative Council Meetings (Liberia) in November 2019, amendments to the Harare and Banjul Protocols were proposed and adopted. The amendments came into effect on 1 January 2020. The amendments are not retroactive in respect of applications filed before 1 January 2020.

Brand owners should note that there have long been concerns about the ARIPO trade mark registration system. One of the concerns with ARIPO trade marks relates to the fact that a number of the member countries are so called ‘common-law countries’, in other words countries that require international treaties to be specifically incorporated into national law before they become binding, a process sometimes referred to as ‘domestication’. Yet quite a few of the ARIPO-member countries have failed to pass national laws incorporating the Banjul Protocol. As a result, there are real concerns about whether ARIPO trade mark registrations are even valid and enforceable in these countries. In contrast, there are few concerns about the much-used ARIPO patent registration, because a number of countries have laws that specifically recognise the agreement that created the ARIPO patent system, the Harare Protocol.

Changes to the Harare Protocol

The Harare Protocol empowers ARIPO to grant patents and to register utility models and industrial designs on behalf of the member countries. The amendments include the following: 

  • The additional page fee (each page over 30) and claim fee (each claim over ten) are now payable on or before filing of the request for substantive examination. Previously, these additional fees were payable on publication and grant. Sequence listings are not counted for additional fees, provided the sequence listing contained in the description complies with WIPO Standard ST.25.
  • There is some uncertainty as to whether or not additional claim fees are payable for voluntary claim amendment filed after payment of the substantive examination fees, if the amendment introduces more claims than were initially filed. The ARIPO Technical Committee will consider this issue in 2020.
  • The substantive examination fees remain unchanged at US$600.
  • It is now possible to request ARIPO to conduct Prior Art Searches for a fee of US$300. 
  • A prescribed fee is now payable for the withdrawal of a designated state. 
  • When withdrawing any designated states, the Applicant/Patentee is now required to submit a Declaration (as well as a Power of Attorney if this is done when paying annuities and the agent paying the annuity is not the agent indicated as address for service).
  • The applicant may now add to the number of designated states before publication of the application, however this provision specifically excludes PCT national phase applications.
  • ARIPO has made provision for the early publication of ARIPO applications, on request and subject to payment of a fee.
  • For divisional applications, ARIPO has clarified that all maintenance fees already due in respect of an earlier application ("parent" application) are to be paid at the time of filing the divisional application.
  • For Utility Models, provisions have been introduced relating to the delayed commencement of substantive examination, for up to one year, upon meeting certain requirements.

Changes to the Banjul Protocol

The Banjul Protocol allows for the registration of trade marks in member countries through a single ARIPO registration. The amendments include the following:

Use, intention to use and registered users

Section 2.3 of the Banjul Protocol, which states that an application for registration must contain a declaration of actual use or intention to use, or be accompanied by an application for the recordal of a registered user, has been amended to remove the registered user option. The effect of this is that an application for registration must now indicate either actual use or an intention to use, but it may also be accompanied by an application to record a registered user.

Restoration

The heading of Section 7 of the Banjul Protocol has been amended to read Duration, Renewal and Restoration of Registrations - this has been done simply to recognise the fact that Section 7.5 does allow for the restoration of lapsed registrations.

Fees - contracting state applicants

Rule 10 of the Regulations deals with fees. This now provides that filing fees need to be paid on or within 21 days of filing, and must be in US dollars. However, if the applicant for registration is a national of an ARIPO contracting state, the filing fee can be paid in the currency of that country.

Opposition - who can oppose?

Section 6bis of the Protocol, which deals with the filing of a notice of opposition, is amended to provide that an ‘interested’ person can oppose an application - previously there was simply reference to a ‘person’. This amendment is unlikely to have much practical effect.

Opposition - procedure

  • Rule 11 ter of the Regulations sets out the procedure for an opposition: 
  • The notice of opposition must be filed within three months of publication.
  • The notice must be in accordance with the national law of the country concerned.
  • The notice must be lodged with the ARIPO office and copied to the relevant national office. 
  • The Office must also transmit the notice to the relevant national office on a specific form. 
  • The national office eventually pronounces on the matter and notifies both the ARIPO Office and the parties of the ruling. 
  • An appeal is subject to the national law of the country concerned. 
  • The national office must notify the ARIPO Office of the outcome of the appeal on a particular form and the ARIPO Office must publish that finding.

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Date published: 8 January 2020
Author: Spoor & Fisher

Tags: ARIPO Harare Protocol Banjul Protocol trade marks patents