May 1, 2000
OAPI/ARIPO Subcommittee of the Treaty Analysis Committee
WHEREAS, INTA has encouraged facilitation of obtaining trademark protection through the harmonization of trademark laws, simplification of trademark registration and development of regional trademark systems; and
WHEREAS, the ARIPO Administrative Council has adopted INTA's proposed changes to the Banjul Protocol on Marks to ensure compliance with the World Trade Organization's Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) and conformance with other international treaties such as the Trademark Law Treaty; and
WHEREAS, only five of the 14 members states of ARIPO have so far adhered to the Banjul Protocol;
BE IT RESOLVED, that the International Trademark Association supports in principle the adherence to the Banjul Protocol on Marks by ARIPO member states.
Establishment of ARIPO
The African Regional Industrial Property Organization (ARIPO) is an international organization created in December, 1976 with the conclusion of the Lusaka Agreement. The philosophy behind forming ARIPO was to enable African countries to pool their resources in order to avoid duplication of financial and human resources. ARIPO's objectives are to promote the harmonization and development of industrial property laws appropriate to the needs of its members, and to establish such common services or organs as may be necessary for the co-ordination, harmonization and development of industrial property.
ARIPO has 14 member states, namely: Bostwana; The Gambia; Ghana; Kenya; Lesotho; Malawi; Sierra Leone; Somalia; Sudan; Swaziland; Tanzania; Uganda; Zambia; and Zimbabwe. Potential member states who now have observer status are: Angola; Egypt; Eritrea; Ethiopia; Liberia; Mauritius; Mozambique; Namibia; Nigeria ; Seychelles; and South Africa. In November, 1999, Mozambique decided to join ARIPO and the deposit of its instruments of accession is expected in the near future.
ARIPO has three main organs: the Council of Ministers; the Administrative Council; and the Secretariat. The Administrative Council is responsible for formulating and directing the execution of policy, which includes the Banjul Protocol on Marks that was adopted in 1993 and came into force on 6 March 1997. To date, five ARIPO members have become contracting parties to the Protocol: Lesotho; Malawi; Swaziland; Tanzania; and Zimbabwe. Since 1997, the Protocol has been revised in order to conform to the TRIPS Agreement and the Trademark Law Treaty.
ARIPO System for Trademark Registration
The Banjul Protocol establishes a centralized filing system where a single application in one language filed either in a national office of a contracting state or directly with the ARIPO Office in Harare, Zimbabwe has the effect of a regular national filing in states designated in the application. The application is then checked for formalities by the ARIPO Office, accorded a filing date and then sent to the designated states which have 12 months to examine the application under their national laws. If no objections are communicated to the ARIPO Office within that period, ARIPO advertises its acceptance and registers the mark with effect in all designated states.
It is important to note that the ARIPO system does not replace the national systems. With the exception of assignments and renewals, most of the post application procedures are handled by the national systems such as oppositions, cancellations and infringements. An applicant is not precluded from pursuing its application through the national system in other member states even though its application may have been rejected in one or more designated states.
Advantages of the ARIPO System include:
- Availability to applicants of a cost-effective, simple and user friendly system to file for trademark registration. There is a small basic charge for filing the application and thereafter a charge for each state designated.
- Accessibility to a reliable registration system is enhanced through the computerization of the ARIPO Office with the assistance of WIPO and registrations will be centrally maintained.
- Responsiveness of the ARIPO staff who are continually being trained in the latest computer techniques and office procedures, thus providing a locus of knowledge and a model for the national systems.
To encourage participation by member states in the ARIPO System for trademark registration, the ARIPO Office has provided draft amendments for each member state 's national law to implement the Protocol. As a result, Lesotho and Tanzania became parties to the Protocol in 1999. Other ARIPO member states are considering this legislation.
The reason cited most often by some member states for not ratifying the Protocol is that the current cost structure of ARIPO is not adequate nor beneficial to them since they currently collect fees in U.S. dollars which are substantially higher than the ARIPO fees. This position may be due primarily to a lack of understanding of the cost-effectiveness of central registry systems which operate on reduced overhead to process and maintain a larger quantity of registrations. To address this issue, the ARIPO Administrative Council in November 1999 called for a study of the cost structure and for recommendations to be made to the satisfaction of the member states.
It is vitally important for users of both the ARIPO and national systems in the region to encourage a more efficient and cost-effective means for trade mark registration. Accordingly, the OAPI/ARIPO Subcommittee requests that the Board of Directors adopt the foregoing resolution urging member states to adhere to the Banjul Protocol through (1) ratifying the treaty and (2) enacting implementing legislation.