International registrations that extend to OAPI - WIPO announcement
OAPI’s recent accession to the Madrid Protocol has resulted in much controversy. Many IP practitioners believe that the accession is unlawful and that International registrations (IRs) covering OAPI will be invalid. This concern relates to the fact that OAPI acceded to the Madrid Protocol by way of a resolution of its Administrative Council. OAPI should have amended the founding document, the Bangui Agreement.
On 24 March 2015 WIPO published a notification regarding OAPI’s accession. The notification was in terms of Rule 20bis (6)(b) of the ‘Common Regulations’ under the Madrid Agreement and the Madrid Protocol.
The effect of this latest WIPO notification is that licence recordals against IRs that extend to OAPI will have no effect in OAPI.
Rule 20bis is the rule that deals with the recordal of licences against IRs. It provides, inter alia, that the recordal must specify which Contracting Parties (member countries or organisations) the licence relates to. Rule 20bis (6)(b) provides that any Contracting Party which makes provision for the recordal of licences in its own law may notify WIPO that the recordal of licences in the International Register will have no effect in that Contracting Party. OAPI has seemingly notified WIPO under Rule 20bis (6)(b).
It is unclear why OAPI has exercised this option. What is clear is that the law in OAPI states that a licence must be recorded in order to be effective against third parties – it is only use by a recorded licensee that is sufficient to defeat a cancellation action based on non-use.
Owners of IRs that cover OAPI will still need to record licences that apply to the territory of OAPI at the OAPI office.
Please contact us or ask your usual Spoor & Fisher Jersey contact for further information.