The Protection Of Trademarks Through ARIPO

Author:Marketing Inventa
Profession:Inventa International

The African Regional Intellectual Property Organization (ARIPO), formerly known as English Speaking African Regional Intellectual Property Organization (ESARIPO), was created with the Lusaka Agreement (1976) and currently boosts 19 member-states, which are mostly English speaking countries. ARIPO intends to promote the cooperation between members regarding the protection of intellectual property rights and with time it developed to a regional system that allows the registration of patents, trademarks and plant varieties.

The registration of trademark rights is regulated by the Banjul Protocol (1993) which currently has 10 members, including Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Tanzania, Zimbabwe and more recently, São Tomé e Príncipe.

When a trademark owner files an application directly at ARIPO or through a member-state's IP Office, ARIPO only conducts a formal examination, checking, amongst others, if the form has the correct applicant information or if the goods and/or services are in accordance with the Nice Classification; if the application complies, ARIPO notifies the national IP Offices so that they are able to conduct a substantive examination according to their national laws.

The national IP Offices have 9 months counting from this notification to conduct substantive examinations and inform ARIPO if the mark should or should not be registered, either from absolute or relative grounds, which might include the existence of previous third party rights such as trademarks.

One of the advantages of the ARIPO system is that if the mark is rejected by one or several of its member-states, it can still proceed to registration in regards to the remaining member-states that were originally designated during the application procedure. This contrasts with other regional trademark protection systems such as, mutatis mutandis, the European Union Trademark (EUTM) or the Organisation Africaine de la Propriété Intellectuelle (OAPI), which have unitary systems. In other words, an ARIPO trademark might be valid only in some of its member-states.

Coming back to the substantive examination, if a mark is rejected, the national IP Office shall notify ARIPO, which in turn will notify the applicant of the rejection, giving him the possibility of replying directly to the IP Office, arguing why the mark should not have been rejected. This procedure is similar to the international registration of marks under the Madrid Protocol...

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