Madrid Trade Marks in Africa
There are 21 African states or regional organisations that belong to the Madrid Protocol regarding the international registration of trade marks, and where it is possible to get international trade mark registrations (‘ITMRs’). These are:
Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Morocco, Mozambique, Namibia, OAPI, Rwanda, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia, Zimbabwe, plus the island states of Madagascar and Sao Tome & Principe.
We refer to these countries and regions as the ‘African members’.
THE PROBLEM OF LACK OF VALIDITY AND ENFORCEABILITY
ITMRs are neither effective nor enforceable in several of the African members. The problem of lack of validity and enforceability arises mostly in countries that are Commonwealth countries, and that were previously under the sovereignty of Great Britain. These countries are referred to as ‘common law countries’. A distinguishing feature of a common law country is that there is a dualist approach that determines the relationship between international law and municipal law. This means there are two distinct systems of law, one international and the other domestic, and the two systems operate independently of one another.
In order for a principle of international law to have an effect on domestic law in a common law country, it must be expressly and specifically transformed into municipal law in terms of the machinery spelt out in the relevant constitutional dispensation. In other words, an international agreement, such as the Madrid Agreement or Protocol, only becomes part of domestic law when it is enacted into domestic law by the national legislature. A number of African members are common law countries that have not enacted the necessary legislation in order to give effect to their obligations in terms of Madrid.
COUNTRIES AND REGIONS WHERE ITMRs ARE NOT VALID AND ENFORCEABLE
ITMRs are not valid or enforceable in:
- Sierra Leone
ITMRs are probably effective and enforceable in:
- Sao Tome & Principe
It is worth noting that only a small number of the countries where ITMRs are valid and enforceable routinely examine applications for ITMRs. These are:
Algeria, Egypt, Madagascar, Morocco, Mozambique and Sudan.
*Gambia's accession is very recent, therefore there is no established procedure for the examination of ITMRs. However, trade mark owners should be aware that examination is unlikely to be rigorous and that advertisement, for opposition purposes, will probably take longer than 18 months to occur after filing. This will mean that international registrations, which have not been the subject of proper scrutiny, could become valid by default.
** Liberia’s IP legislation was changed in July 2016 and the new legislation makes specific provision for ITMRs for the first time. In our view it is highly unlikely that ITMRs designating Liberia will be examined at all or within the prescribed period, with the result that they will become valid by default.
***Zimbabwe joined the Madrid Protocol with effect from 11 March 2015. At the time, Zimbabwe did not amend its domestic law to give effect to the Madrid Protocol. As a British law (common law) country, this is important. There were, therefore, real doubts about the validity of Zimbabwe’s accession, and the legality of ITMRs designating Zimbabwe. These doubts have now been removed by the Trade Marks (Madrid Protocol) Regulations 2017, which were both published and became operational on 13 April 2017. It is now quite clear that an ITMR can lawfully designate Zimbabwe. It is also clear that the opposition term to a Zimbabwean designation of an IR will run for a period of two months from the date of publication in the Zimbabwe Industrial Property Journal. We are currently establishing what prospect Zimbabwe has of meeting the 18-month deadline to examine.
More detail is warranted. The African members fall into a number of different categories that determine whether or not ITMRs can be considered enforceable. These categories are as follows:
1. Countries that have specific national laws recognising the Madrid system
These are countries that have an act or statute that specifically recognises Madrid and ITMRs. As a consequence, ITMRs are fully enforceable, subject to any challenge to validity and the uncertainties of litigation. Only five of the African members have national laws that specifically refer to ITMRs:
Botswana, Gambia, Ghana, Kenya, Liberia, Mozambique and Zimbabwe.
2. Countries that have a general clause regarding international treaties in their legislation
There are a number of countries that have a so-called ‘general clause’ in their legislation that deals with the relationship between international treaties and domestic legislation.
Lesotho is a common law country and there is no specific national law that recognises its accession to Madrid. The law governing intellectual property in Lesotho, the Industrial Property Order of 1989, does however contain a general clause, section 44, that reads as follows:
‘The provisions of any international treaty in respect of industrial property to which Lesotho is a party shall apply to matters dealt with by this Order and, in case of conflict with the provisions of this Order, the provisions of the international treaty shall prevail.’
As Lesotho is a common law country, this general clause cannot overcome the requirement that, in order for an international treaty to have effect in Lesotho, it must be expressly and specifically transformed into municipal law by enactment by the national legislature. Because Lesotho’s obligations in terms of the Madrid system have not been enacted into domestic law by the national legislature, ITMRs have no force or effect in Lesotho. This lack of enforceability is confirmed by the fact that the Registry does not examine or keep any proper record of ITMRs designating Lesotho.
The Registry does from time to time cite international registrations as being an obstacle to the registration of national applications but such citations are done in an erratic and unpredictable manner and in our view are invalid given that international registrations should have no force or effect in Lesotho.
Namibia is a common law country and it has not passed any law specifically recognising the Madrid system and ITMRs. Article 44 of its Constitution does, however, have the following general provision:
‘Unless otherwise provided by the Constitution or Act of Parliament, the general rules of public international law and international agreements binding upon Namibia under the constitution shall form part of the law of Namibia.’
In terms of the Vienna Convention, a treaty is binding on a state once it has expressly consented to be bound by the treaty. It would therefore have to comply with the requirements laid down in Namibian municipal law, particularly the constitution. Article 32(3)(e) of the constitution empowers the President to negotiate and sign treaties, but Article 63(2)(e) states that the National Assembly shall agree to the ratification of, or accession to, international agreements. Thus for treaties that have been negotiated and signed by the President to be binding on Namibia, they require parliamentary approval.
The Madrid Protocol has not been approved by the National Assembly and therefore our current advice is that ITMRs are not effective in Namibia.
3. Civil Law Jurisdictions
A civil law heritage dictates that international treaty obligations are accepted as binding on the national territory without any domestic legislation, and even prevail over national laws. No specific treaty recognising law or general clause is required. Eight of the African members are civil law jurisdictions:
Algeria, Egypt, Madagascar, Morocco, Rwanda, Sao Tome & Principe, Sudan and Tunisia.
ITMRs are therefore valid and enforceable in these countries. Although Egypt and Sudan were at one stage thought to have been common law countries because of their histories of British rule, the current policies of the registries and courts in these countries indicate that they should be considered alongside the civil law states. However, there is still a chance that in Sudan certain decisions upholding ITMRs may be challenged on appeal.
Regional organisations – OAPI
OAPI, a regional union comprising countries that would be regarded as civil law jurisdictions, is a special case. OAPI deposited its instrument of accession to the Madrid Protocol on 5 December 2014, and OAPI’s membership entered into force on 5 March 2015. OAPI has not, however, amended its ‘law’, by which we mean the underlying agreement that created this union, the Bangui Agreement. Instead OAPI chose to ‘accede’ by way of a simple resolution of its administrative body. There is no indication that OAPI has any intention of amending the Bangui Agreement; an amendment that would need to be ratified by its member states.
Without such an amendment, ITMRs designating OAPI will, in our view, not be enforceable. Until OAPI attends to the amendment of its law, we would not recommend that trade mark owners rely on ITMRs for protection.
4. Common Law Countries (without specific national laws)
It has long been accepted that common law countries will be guided by the principle that ‘an international agreement can only become part of the domestic law of a subscribing country, when it has expressly been enacted into that national law by an Act of Parliament.’ This means that an ITMR designating a common law country cannot lawfully be processed by the Registrar of Trade Marks, nor can it be recognised or enforced in that jurisdiction.
There is no reference to Madrid in the national laws of any of the following African members, all of which are common law countries:
Lesotho, Namibia, Sierra Leone, Swaziland and Zambia.
As a result our view is that an ITMR designating any of these countries cannot lawfully be processed or enforced.
Please contact us for further information.