OAPI Advances IP in French-Speaking Africa

Denis L. Bohoussou (OAPI, Côte d’Ivoire)

Denis L. Bohoussou, of the Côte d’Ivoire, took up the role of director general of the African Intellectual Property Organization (OAPI) in August 2017 following a period as head of his country’s intellectual property (IP) office and other government roles. He has also lectured in IP and civil law at different universities and institutions.

During his time at OAPI, he and his team have worked hard to speed up the grant of IP rights;  emphasize newer protections, such as plant varieties and geographical indications; and  strengthen the transparency around the Organization’s work. In this interview he details some of OAPI’s achievements since 2017.

You were recently reappointed as Director General of OAPI. What are the main achievements of your first mandate? What will be the main priorities of your second?
The Board of Directors has placed its trust in me by renewing my term of office due to the results my team and I achieved at the end of the first term.

OAPI is not only an industrial property office, but also a development agency. If you keep this dual function in mind, you can better understand the achievements of the first mandate.

When I began my term of office, we focused on reducing the delay in IP rights. Despite some pitfalls, the sustainable information system we implemented has been performing well. This very advanced system introduced electronic applications for IP titles, the dematerialization of processes, and other tools and equipment to improve the quality of services we could provide to users.

The enterprise resource planning tools we have deployed to facilitate the sharing and transparency of accounting and financial information have also improved our corporate governance. These actions were part of the Strategic Plan 2018–2022.

Despite the COVID-19 pandemic, OAPI’s development mission during my first mandate saw us being particularly active in the promotion of plant varieties. This led to the accreditation of four centers in OAPI member states for DUS (distinctness, uniformity, and stability) testing, making it possible to determine a new plant variety and the training of 229 experts in this area. As a result, we received 30 percent more plant variety applications in 2022 than in previous years.

As a development agency, OAPI was also very active in the promotion of local African products through the labeling of new products for protection as geographical indications. Between 2018 and 2022, there were five PGIs (protected geographical indications), compared to only three before this period.

In the field of capacity building, OAPI launched the first training course on collective management in French-speaking Africa, sanctioned by the Certificate of Aptitude for Collective Management (CAGeC). To promote technological development in member states, OAPI has also set up a master’s degree program for patent engineers.

The priorities for the second term of office are:

• To consolidate what has been achieved in order to continue improving the services provided to users;
• To complete the establishment of a sustainable and efficient information system, as reflected in OAPI’s IT master plan; and
• To establish a finance mechanism for inventions and technological innovations, to support inventors and research centers in increasing the value of OAPI patents. This is in line with the Strategic Plan 2018–2022, which aims to support member states in their technological and economic development.

What are the specifics of the reform of substantive examination?
The main innovation of the revised Bangui Agreement (the original Agreement in 1977 set up OAPI), adopted on December 14, 2015, was the introduction of substantive examination of trademark applications filed with OAPI as of January 1, 2022.

The new trademark law also enshrined the dual publication of applications and registrations. The application for registration is published online in the Official Bulletin of Industrial Property (BOPI) of OAPI, following formality examination and conditions for admissibility, after verification of certain technical requirements, if the sign is not likely to offend public order or morality.

The publication of the application is the starting point of the three-month period during which any interested person may file an opposition or claim ownership. It should be noted that the time limit for this administrative procedure was longer (six months) in the former law (1999 Act) and started from the publication of the registration of the mark.

Concerning the main specifics of substantive examination, the criteria for the validity of the mark have not changed. However, the examination is now conducted based on all the absolute grounds for refusal of granting protection, whereas the former law limited examination only to two grounds out of the four provided for (Article 3, paragraphs (c) and (e), Annex III of the Bangui Agreement, 1999 Act).

Can you give us an overview of the provision on geographical indications?
The OAPI system provides a solid framework for the regional protection of geographical indications (Annex VI of the Bangui Agreement). A specific regulation on the use and management of marks containing geographical indications protected at OAPI supplement this annex.

The revision of the Bangui Agreement in 2015 introduced several innovations aimed at strengthening the standard of protection of geographical indications in OAPI. Among these innovations are:

• The obligation to base a request on specifications adopted by all the actors involved in the geographical indication application process. The national committee in charge of geographical indications in the member state must approve these specifications;
• Recognition of cross-border geographical indications;
• Publication of the application prior to examination on the merits;
• The need to provide a presentation note of the project that supports the geographical indication (business model) approach; and
• Strengthening measures to defend protected geographical indications by raising the quantum of penalties applicable to counterfeiting.

These various innovations have helped to strengthen the dynamics of geographical indications, with the recognition of new products such as KILICHI DU NIGER, OIGNON VIOLET DE GALMI (Niger), ÉCHALOTE DE BANDIAGARA (Mali), and CHAPEAU DE SAPONÉ (Burkina Faso).

In addition, on December 15, 2022, OAPI acceded to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications for International Registration. This will encourage the international promotion of local products and crafts from OAPI member states.

How does an appeal against an opposition to the registration of a trademark before the High Commission of Appeal (Commission Supérieure de Recours) work?
Under the Bangui Agreement, an appeal against an opposition decision may be lodged with OAPI’s High Commission of Appeal.

It manages appeals not only on opposition decisions, but also on decisions rejecting applications for IP rights, and so on, as well as decisions of the Director General disbarring accredited agents.

It is composed of six magistrates from OAPI member states, i.e., three full members and three alternates for a term of office of two years. It centralizes all procedures and keeps their records. The Commission holds two sessions per year at the Organization’s headquarters in Yaoundé, Cameroon.

How do trademark owners oppose an application based solely on prior use, and will this opposition hold in the absence of registration, possibly causing challenges in the absence of a trademark registration?
Annex III of the Bangui Agreement provides trademark owners with several measures to protect themselves both before the Organization and national courts.

The most common means of defense before the Organization is opposition proceedings. This is an administrative procedure aimed at preventing a trademark registration on the grounds that it infringes an earlier registered right belonging to the opponent or does not satisfy the requirements laid down in Articles 2 and 3 of Annex III (Article 15, Annex III).

In the case of infringement of an earlier registered right, the opponent must prove that they are the owner of an earlier registered trademark in force in OAPI. If they cannot do this, they will lose an opposition proceeding based solely on prior use.

On the other hand, if a person who, at the time of filing, knew or should have known that another person had prior use of that mark applies for a trademark, the person entitled to the certificate of registration may claim ownership of the same trademark with the Organization within three months of the publication of the application. Thus, the action to be brought in case of prior use is the claim of ownership (Article 16, Annex III).

Under the Bamako Act of December 14, 2015, the person entitled to the certificate may also bring this action before a court when OAPI has finally been registered the mark (Article 47, Annex III).

Furthermore, in accordance with international conventions (the Paris Convention and the TRIPS Agreement) and Article 5 of Annex III, the owner of a well-known mark (not registered in OAPI) may apply to the competent national court in the national territory of one of the member states to oppose the filing of a mark which may create confusion with his own.

The new OAPI IP Law of January 1, 2022, allows for the registration of nontraditional trademarks, including sound marks. What is new compared to the registration of a conventional trademark?
In a world with constant technological changes, it was important for OAPI to meet the expectations of users of IP systems. Thus, the Bangui Agreement of December 14, 2015, broadened the list of signs that OAPI may protect as marks, with the admission of sound marks, audiovisual or multimedia signs, and series of marks (Article 2, paragraph 1(c)(d)(e), Annex III).

The major challenge in dealing with “nontraditional marks” is representation and examination. As for the representation of nontraditional trademarks, it is done on a digital medium. However, where the applicant provides both the digital medium and the reproduction of the sign on a form, in the event of a dispute, the reproduction on the form shall prevail.

The complexity of examining these new types of marks is only apparent, as the same validity criteria applies to any mark, regardless of how it is represented. The bibliographic data of nontraditional marks will be published in the same way as those of other marks. However, the BOPI will provide a link to the mark.

How does OAPI contribute to the discussions on the African Continental Free Trade Area (AfCFTA) Agreement?
OAPI has only observer status and therefore cannot participate directly in the negotiations. However, this issue is of great interest to our countries, which is why we pleaded for the inclusion of IP rights when the legal instruments of the AfCFTA Agreement were being formulated. This was the topic of the regional conference on challenges and prospects in the AfCFTA, organized by OAPI in October 2021 in Libreville, Gabon. We considered that it was the duty and responsibility of OAPI to equip the negotiators of the member states so that the negotiations protected their interests and those of the Organization.

What is OAPI’s strategy to encourage female IP leaders?
Women represent about 45 percent of the total number of staff in OAPI, so we are moving towards parity. You can also see the same trend in the scholarships awarded for the master’s degree in IP law.

The African Exhibition of Invention and Innovative Enterprise (SAIIT), which is held every two years in one of the 17 member states, awards a prize to the best female inventor. All these actions, which do not cover everything we are trying to do, are part of our commitment to encourage women’s leadership.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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