OAPI – Acceding Countries – Extending OAPI Trade Mark Rights – Survival of National Rights (The Guinea Factor)

1.    Background

1.1    The constitution of OAPI was the 1977 Bangui Agreement.  Each member adopts, as its national intellectual          property laws, the detailed provisions set out in the Agreement (“OAPI laws”).  The founder members of          OAPI were Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Gabon, Ivory Coast,          Mauritania, Niger, Senegal and Togo.  Mali acceded in 1984, Guinea in 1990, Guinea-Bissau in 1998 and          Equatorial Guinea in 2000.

1.2    The tidy OAPI landscape contained islands of uncertainty, surrounding the accession of new member states.           One was the extension of existing OAPI rights into acceding countries.  The other was the fate of existing          national registrations in one new member, Guinea.  The issues have become clearer but have not been          settled beyond doubt.  These notes summarise our assessments to date.

2.    Extending Rights to Acceding Countries

2.1    OAPI laws provided clearly for OAPI registrations, dated after the accession of a new member state, to be          effective in the new member’s territory.  But they originally contained no guidance about the extension of           OAPI rights into acceding states, as discussed in 2.2 below..

2.2    A Regulation was made on 4 December 1998 and supplemented by several resolutions and announcements          between 2003 and 2009.  Those “OAPI Statements” provided for extending OAPI registrations, existing on          accession of a new member, into the acceding state. There were two phases:-
          a)    The 1998 Regulation permitted voluntary applications by the owners of OAPI registrations, to extend                   their effects into acceding territories.
          b)    Subsequent OAPI Statements declared that the renewal of an OAPI registration resulted in the                                    automatic extension of its effects into those territories which had joined by the renewal date.

2.3    The validity and effects of the OAPI Statements have been extensively debated and we now consider they          can be relied on as follows:-
          a)    Applications for voluntary extension of OAPI rights into acceding members, already duly filed with OAPI                  and granted by it, are effective.
          b)    Every OAPI registration renewed after 4 December 1998 is deemed by OAPI to have been extended to                  all states, being members at the date of renewal.  This means that all OAPI registrations now                                   subsisting are deemed to be in force in Mali, Guinea and Guinea-Bissau which had joined before that                  date.
          c)    Equatorial Guinea did not join until 23 November 2000, so OAPI registrations made or renewed before                  that date are not enforceable in Equatorial Guinea.  We will be happy to discuss any such case ad hoc.
          d)    Apart from any Equatorial Guinea cases mentioned in (c) above, all extension applications which have                  been made to OAPI and which are still pending, are superfluous. They will not be completed by OAPI.

3.    Guinea  –  The Effect of Accession on Existing Registrations

3.1    After Guinea joined OAPI in 1990, the national registry (Greffe) continued to accept renewals and                            post-registration transactions affecting existing Guinea registrations.

3.2    The OAPI Statements included a provision that existing national registrations were to last only until their          next renewal dates.  This was ignored by the Guinea authorities and so the renewals of existing Guinea          registrations as well as recordals of assignments etc. continued.

3.3    However, If the OAPI Statements are accepted under OAPI law, applicable in Guinea per 1.1 above, Guinea          renewals made after 4 December 1998 are invalid.  No renewal application should now be acceptable.  The          last subsisting registrations will expire by 3 December 2013.

3.4    Meanwhile, it is thought that the Greffe has finally stopped issuing certificates of renewal, etc. but this is not          certain because all communications with the Greffe have been lost.

3.5    That bad news is balanced by the good news in 2.3 b) that all OAPI registrations now subsisting are deemed           to be in force in Guinea.  Owners should rely on OAPI registrations for protection in Guinea as well as the           other 15 member states.  If a registration appears to exist in Guinea and not in OAPI, that situation calls for           a serious review.

4.    Guinea  –  Extending existing National Registrations to OAPI

The OAPI Statements allow the owners of registrations, subsisting in Guinea when it acceded to OAPI, to apply to OAPI for the effects of those registrations to be extended to the whole of OAPI.  A number of extension applications were made, of which some have been completed.  The remainder are expected to be finalised by OAPI in due course.

5.    More information

Additional, detailed information on the above issues is available from your usual contact at Spoor & Fisher Jersey, or info@spoor.co.uk.

We maintain constant communication with OAPI and continue our efforts to contact the Guinea authorities.  All developments will be reported on this site.