11 January 2012

ARIPO, Banjul Protocol, ESARIPO...

We now take a look at ARIPO, standing for the African Regional Intellectual Property Organization.

It is this Office's acronym that also dissuades me from using the English AIPO acronym for OAPI.

When ARIPO came about in the late 1970s it was prefixed as ESARIPO, the "ES" being for "English-speaking", but over time this was thought to restrict membership. With respect to trade marks ARIPO has only been relevant since the late 1990s and the adoption of the Banjul Protocol.

So there you have the origin of the three terms for the same thing. I would refer to it is ARIPO, but noting the Banjul Protocol can be useful to help you remember that it works in a similar way to the Madrid Protocol in that you pick and choose the countries you wish to include and the fees are calculated accordingly. The ARIPO members that have ratified the Banjul Protocol can be designated in an application:
  • Botswana
  • Lesotho
  • Liberia
  • Malawi
  • Namibia
  • Swaziland
  • Tanzania (taken to exclude Zanzibar, which has its own separate Trade Marks Office)
  • Uganda
  • Zimbabwe
The problem is that these countries are all Common Law countries and therefore recognition of the Banjul Protocol needs to be enshrined in the national legislation. There are doubts regarding the enforceability of ARIPO trade marks in some member states due to a general lack of amendments to local laws. Botswana and Zimbabwe are exceptions to this. There is also a school of thought that suggests Namibia’s ratification of the Banjul Protocol is automatically applied locally due to the country’s constitution committing it to international agreements it has signed up to but this is, as yet, untested.

Therefore, it would be considered unwise to take the ARIPO route to obtain trade mark protection across these countries. They all maintain national filing routes and these should be preferred. An exception to this would be in an ARIPO application designating Botswana and Zimbabwe where an ARIPO application could provide cost savings.

Hopefully the other member states will make steps to recognise their Banjul Protocol obligations in their national laws although they may have more pressing priorities.

A final point would be on record keeping. OAPI registrations - given they are a unitary right - are usually docketed as a regular national trade marks. With ARIPO it is different. I would suggest they are docketed in a similar fashion to International Registrations. For many of us this would mean an International Registration record with sprouting records for each designated country and - depending on the sophistication of your IP database - allowing for easy mass updating of each country record, where appropriate. The issue here is that whilst most IP databases are geared up towards managing International Registrations in this way, they don't have a similar mechanism for ARIPO registrations. As such, in many organisations ARIPO registrations are docketed as regular national trade marks and this can mean if someone asks if they have XYZ trade mark in, say, Zimbabwe, a check of your database for XYZ in Zimbabwe would not locate an ARIPO registration for XYZ designating Zimbabwe. In this event, I suggest the designated countries are recorded in a prominent place of the ARIPO record and are immediately visible, and, in using the XYZ trade mark example, you would need to remember to search for both ARIPO and Zimbabwe. From a practical point of view, this issue is not of major concern whilst ARIPO trade mark filings remain low in number.