Challenges of Filing a Trademark Application in the African Region
The Madrid Protocol is a one-stop solution for the registration and management of trademarks worldwide. Brand owners from the Madrid Member countries, including the UAE, can register their trademarks in over 120 countries through one application, in one language and by paying one set of fees. However, the UAE brand owners need to be aware of the challenges they may face while using Madrid Protocol for registering a trademark in African countries.
If you are seeking trademark protection in African countries through Madrid Protocol, it is advisable to consult first with trademark agents in the UAE. They can guide you through the requirements and features of trademark registration in the African region. Meanwhile, you can read the following article that will enlighten you on the challenges of using the Madrid Protocol for the African region:
Lack of Domestication of Madrid Protocol
The Madrid Procol of International Trademark Registration has been ratified by 22 African countries but its geographical reach extends to 38 countries due to the participation of the African Intellectual Property Organization. However, of the 38 countries, only 9 have properly domesticated the Madrid Protocol by appropriately amending their local trademark laws. This means you may find it hard to ascertain whether a trademark was granted or can be enforced in the designated member country under its national law.
A country that joins the Madrid Protocol needs to put in place additional direction, procedures and mechanisms on a national level to ensure that the local IP office can manage international trademark registrations, objections, oppositions etc. Even the National Trademark Law will not be enacted properly until a country promulgates Executive Regulations or Enabling Regulations that formally determine the processes and procedures through which the provisions of the trademark law can be implemented practically. Only nine of the 38 countries have domesticated the Madrid Protocol through enabling regulations.
The trademark registration in the African region through Madrid Protocols is riddled with issues like larger backlogs, undigitized records or delays in the administrative proceedings due to office actions or oppositions. It means the local trademark office may fail to issue a ‘statement of grant of protection’ within the deadline. Due to these reasons and the conflict with the national & international laws, the applicants may fail to get adequate legal certainty that their trademarks can be enforced in the region.
Lack of Recognition in National Law
Procedural issues are not the only challenges the UAE brand owners might face in Africa. The effective use of any IP protocol is dependent upon whether the national law has clearly recognised it or not. The local IP law should clearly state that the International Trademark Registrations will have the same force and effect as the national registrations. If a country’s national trademark law has not expressly recognised the Madrid Protocol, the onus is on the national courts to determine whether the IP rights granted by International Registration should outperform the rights arising from national common law.
For example, the regional organisation OAPI doesn’t explicitly mention the Madrid Protocol in its procedural provisions. It creates ambiguity about whether the OAPI has the legal powers to ratify international treaties on behalf of its member-states and not merely implement them. However, you need to remember that the OAPI completely implements the Madrid Protocol and examines international trademark applications. Moreover, you can’t file standalone applications in the OAPI member countries. This means you cant get protection in OAPI member countries through separate national registrations.
Trademark Clearance Search is Challenging
Carrying out a trademark search in Africa is a challenging process. Many IP offices lack a singular digital register for trademarks containing both national and trademark registrations. This means a trademark search carried out on an official database may not match with a search conducted on a private database. Consult with trademark agents in the UAE before making any trademark decisions.
Lack of Clarity in Trademark Litigations
The considerations and legal uncertainties listed in this article are yet to be tested before the national courts of law in the African region. IP litigation in Africa is not robust or clearly established, which means the applicants may need more certainty regarding the enforceability of registered trademarks. Applicants worried about counterfeiting will be more concerned about this challenge.
Consult with the Best Trademark Agents in the UAE
Madrid Protocol for international trademark registration is the best solution for ensuring trademark protection in Africa. Even though the Protocol is a one-stop solution for worldwide trademark protection, challenges exist in many member countries in Africa. However, consulting with trademark agents in the UAE such as Jitendra Intellectual Property (JIP) is the best way to navigate these challenges.
JIP has a highly qualified team of trademark agents who can advise you on the requirements in each Madrid Protocol Member Country. We can also advise you on the member countries that have an efficient system in place for the Madrid Protocol. JIP’s international trademark services will allow you to ensure protection for your brands while securing your investments.