Circular No. 349: Madrid - An African Perspective
The Madrid System, which is governed by the Madrid Agreement and Madrid Protocol, has proved to be an effective and relatively inexpensive way for trade mark owners to secure protection for their trade marks in several countries of the world. With a single application at their national Trade Marks Office, trade mark proprietors may secure protection of their trade marks in any or all of the other member countries.
Because of these advantages, 77 countries are currently members of the Madrid Union, including several countries in Africa. It must be stressed, however, that while a number of African countries have signed up to either the Madrid Agreement or Madrid Protocol, only in a few of those countries are international registrations valid and enforceable. At the time of writing, Algeria, Egypt, Kenya, Lesotho, Liberia, Morocco, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland and Zambia have signed up to either the Madrid Agreement or Protocol, but only in Algeria, Mozambique and Morocco are international registrations certainly valid.
As you will note, in Kenya it is our view that only international registrations designating Kenya, dated after 22 August 2003, can be effective and enforceable in Kenya. In Egypt, the constitution requires obligations of an international treaty to be incorporated into the local laws by the passing and publication of implementing rules and regulations. There is some doubt over the ratification and implementation of amendments to the Agreement and therefore the overall situation in Egypt is uncertain.
In all of the remaining countries of those mentioned above, namely Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia, international registrations are not enforceable. As these are common law countries, their obligations in terms of the Madrid Agreement and the Madrid Protocol would need to be confirmed by appropriate legislation before international registrations can be recognised and be enforceable; however, none of these countries have passed the necessary legislation.
We are, of course, monitoring developments closely in Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia, and will advise clients as soon as the necessary legislation has been passed, giving effect to those countries’ obligations. Set out below are a few short comments on the state of play in most of these countries:
Although Kenya joined the Agreement and Protocol in 1998, it was only relatively recently that legislation was passed giving effect to Kenya’s Madrid obligations. This law, The Trade Marks (Amendment) Act, 2002, and the Trade Marks (Amendment) Rules only came into effect on 22 August 2003.
It is our view therefore that international registrations, designating Kenya prior to 22 August 2003, should have no force or effect in Kenya.
As mentioned, Liberia has not passed the necessary legislation to enforce its obligations in terms of the Madrid Agreement and hence international registrations cannot have any force or effect in Liberia. It is also very unlikely that legislation will be passed in the foreseeable future.
Lesotho and Swaziland
No national legislation has been adopted in either of these countries and there are no registers of international registrations. There would also appear to be no legislation in the pipeline which will confirm Lesotho or Swaziland’s obligations in terms of Madrid.
Filing Requirements in Swaziland
A draft law provides for recognition of Namibia’s obligations in terms of Madrid. This law, however, is not yet in force and accordingly international registrations can have no force or effect in Namibia. Furthermore, once the law does come into force, protection arising from international registrations prior to accession cannot be extended to Namibia.
The Trade Marks Office is aware of the need for legislation to be passed before international registrations can be effective. In addition, they do keep a register of international registrations designating Sierra Leone, and indeed entertain oppositions and cancellation actions in respect of those registrations, although they do not intend issuing any decisions in such opposition and cancellation actions, pending the enactment of the necessary legislation.
The Trade Marks Office is not aware of any legislation being considered, let alone enacted, and it is therefore unlikely that the necessary legislation will be adopted within the foreseeable future. The Registrar does entertain opposition proceedings against international registrations, but does not consider them or issue judgments. In addition, while the Registrar cites international registrations in his official actions, he has confirmed that, otherwise, international registrations can have no force or effect in Sudan.
Although there has been a proliferation of African countries joining the Madrid Union, only in Algeria, Morocco and Mozambique are international registrations certainly effective. There is some small measure of doubt as to the effectiveness and enforceability of international registrations in Egypt, while in Kenya only international registrations designating Kenya at a date after 22 August 2003 are enforceable in that country. In the remaining countries, international registrations can be of no force or effect until the necessary national legislation is enacted. It is therefore important that trade mark owners secure and maintain national registrations in particular in Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia.
Spoor & Fisher Jersey