The Gambia joins the Madrid Protocol

The Gambia will become the next member of the Madrid Protocol when it joins up on 18 December 2015.

African membership of the Madrid System continues to grow, although being the smallest country on the mainland of Africa, the addition of the Gambia will not make a significant impact on the worldwide Madrid System map.

Furthermore, although a lot of African countries are now members of the Madrid System, not all of these have made local legislative amendments to reflect Madrid membership and the enforceability of International Registrations is highly questionable.

This does not appear to be the case for the Gambia though, which has a relatively modern trademark law.

The Gambia has previously been infamous for its significant delays caused most notably by an enormous backlog in printing Trademark Journals. However, in recent times it has made tremendous efforts to get applications advertised and made significant inroads into its backlog.

Nonetheless, resources are at a premium at the Gambian Registry and an increase in filings caused by Madrid designations may push the Registry's capabilities even more. Of course, if you designate via Madrid and do not get a refusal in the designated time then you have an assumed registration (although this does not necessarily rule out a future challenge). Covering the Gambia through a Madrid designation will be an attractive option to many.

When it comes to Provisional Refusals, the Gambia has made a declaration under Rule 17(5)(e). Such ex officio Provisional Refusals can only be contested "before an authority external to the said Office" e.g. a tribunal or court.

The Gambia joins only China and Madagascar in making such a declaration. In practice, even if the Gambian Registry can cope with examining all its International designations in the required timescale, examination can be sketchy and it's not anticipated that the Registry will be issuing rafts of Provisional Refusals, probably very few.

Official fees in Africa

Africa may represent a significant region where brand owners will look to secure registration of their trade marks in the coming years. As some begin to file trade marks more regularly they may come up with some surprisingly high official fees. I write this piece as, unfortunately, I have come across official fees being quoted that are difficult to believe. One example I can recall is an agent quoting an official fee of £300 when in reality it was under a third of this.

It would be easy to suggest that corruption is endemic in Africa. Some may think it is fair game for a local agent to make a quick buck out of (wealthy) western brand owners. I would disagree with this but it is important we look at this objectively - and corruption is far from an exclusively African problem.

Official fees will often be paid in local currencies which can have unpredictable exchange rates with the major world currencies particularly when inflation can easily get out of control. There is appreciation that African agents may use a liberal exchange rate to ensure they are never out-of-pocket. Furthermore, some of the 'additional official' fees may be making their way to the Trade Marks Offices to ensure 'smooth handling' of an application. This is speculation but many trade mark owners will have ethical policies in place that they should be wary of unknowingly supporting such methods which could be construed as tacit acceptance of such payments.

It should also be noted that the cost of living and doing business can be high in some African cities. For example, Luanda, the Angolan capital, is astonishingly expensive.

Some agents will include other expenses with the official fees. I can recall in the 1990s an African agent for a certain jurisdiction being based in another city to the Trade Marks Office. They sent a messenger on a 'mission' to despatch our application to the Trade Marks Office. This sounded almost exciting; please bear in mind I have been a messenger myself but trips across London to the UK Patent Office at Southampton Buildings did not produce quite the same adrenaline rush! In Africa, where postal services are often unreliable, sending a messenger to another city, even with overnight stops, would probably have been cheaper than flying.

I think we would consider these expenses justified although we should encourage African associates to be transparent about them. Here is a continent where paper applications are often still required and official fees are made by cheque or draft so a physical presence at the Trade Marks Office can be required to make filings. In Morocco, on-line applications are possible but we can anticipate it being some time before other African countries can offer such a facility although Nigeria should be applauded for its recent efforts.

To cut to the chase, I undertook some research to find out the official fees from official sources and I quote them in a table below so you can cross reference to any quotes you may receive. I have quoted for trade mark applications in one class. For some countries, such as Kenya, foreigners must pay fees in US dollars. In other countries, payment in the local currency is required so you can use a currency convertor such as XE to find out the rough amounts in your local currency or the currency quoted to you.

I was unable to find the data for all countries. I could not track down the official fees for Ghana, but I can quote the individual fees they request under the Madrid Protocol; normally individual fees are in the region of the national official fees. Quoting their own regulations, the fees for The Gambia were come to by consulting with the fees for Ghana, Kenya and the UK although none were directly followed. However, they state (correctly) that they are significantly cheaper than the UK fees.

Of course, the links I base my findings on could contain out of date information but I feel we can take most of them at face value.

I hope this is a useful resource. Conversely, this may leave you a little bewildered with filing in Africa but this is where, in particular, South African firms and firms from the British Islands (many African countries are Commonwealth members with UK derived legislation), and elsewhere (for example, Belgian firms often have good contacts in Belgium's former colonies) can help you if need be from "Cairo to Cape Town" - to use the vision below of Cecil Rhodes, a somewhat controversial figure in African history but probably the most well-known person to hail from my home town of Bishop's Stortford.

Jurisdiction	Fee	Notes
Algeria	14000 DZD
ARIPO	$160	One designated country
Botswana	240 BWP	Fee for “large company”
The Gambia	$200	Overseas applicant
Ghana	129 CHF	Madrid Protocol Individual Fee (first part)
Kenya	$200	Foreign applicant
Lesotho	120 LSL	For a body "other than a small entity" Equivalent to 120 ZAR (currencies are pegged at par)
Madagascar	80000 MGA
Malawi	12 MWK
Mauritius	300 MUR
Morocco	1200 MAD
Mozambique	950 MZN
OAPI	400000 CFA	Equivalent to €609.80 (currencies are pegged)
Réunion	€200	Electronic filing fee of a French application which covers Réunion
	€900	E-filing fee of a CTM application which covers Réunion
Rwanda	50000 FRW	Rwanda may change its currency as part of East African economic cooperation
St Helena	£50	A UK registration is a prerequisite to obtaining local protection in St Helena. This would cost £170 in official fees (online filing) plus £20 in official fees to obtain the Certified Copy required to substantiate a St Helena application
Seychelles	300 SCR
South Africa	590 ZAR
Sudan	15 SDG	Based on a computer translation of the Arabic webpage which did not make perfect sense in English
Tunisia	271700 TND
Tanzania	5000 TZS	For the mainland/Tanganyika Trade Marks Registry
Zambia	?	Official fees have been omitted from the website even though there is a place for them
Zimbabwe	$200

If you have any corrections to the above or can advise the official fees for other African countries then please include a comment below. Citations would be appreciated.