Closed Trade Marks Registers still existing

There are a handful of former Trade Marks Registers that have since merged into other Registers but for many intents and purposes are still in existence.

Some old Registers may not add new cases but their old registrations remain on record

Having an unhealthy collection of modern atlases as a child (in the days before the internet), I was aghast when I began working in this field and first came across a trade mark in Sabah. What? Where? I thought I'd heard of every country...

Sabah, formerly the British Crown Colony of North Borneo, had its own Trade Marks Registry operating from the capital Jesselton (now known as Kota Kinabalu). The same is true of neighbouring Sarawak.

Sabah and Sarawak joined with Malaya to form Malaysia. The region of Malaya, with connotations of its British colonial past, is now more properly referred to as Peninsular Malaysia.

The separate Trade Marks Registers remained in place although no new applications were possible; filing a Malaysian application was now required. For a stage, I understand it was possible to merge identical registrations in Malaya, Sabah and Sarawak into a single Malaysian registration but this is no longer possible. This is why there are still registrations in Malaya, Sabah and Sarawak being renewed (and assigned, etc.). However, they are all maintained and renewed at the Intellectual Property Corporation of Malaysia with headquarters in Kuala Lumpur but branch offices in Sabah and Sarawak.

These registrations provide protection in their relevant geographic area and there is a possibility that the owners of identical or highly similar marks may not be the same in different parts of Malaysia.

It is perhaps worth noting that Malaysia now contains three federal territories. Two of these are in Peninsula Malaysia (Malaya) but the other, the wealthy island of Labuan, was ceded by Sabah to the federal Malaysian government in 1984. As such it is possible that an owner of identical Malaya/Sabah/Sarawak registrations would not have coverage for the whole modern day country of Malaysia. (In this event it would, of course, be possible to make a new application in Malaysia.)

Flag of Transkei, one of three bantustans that had their own trade marks law

Of more notorious note are the three trade mark jurisdictions derived from former bantustans in South Africa. Four of these achieved independence, albeit unrecognised by the international community, the so-called "TBVC States" of Transkei, Bophuthatswana, Venda and Ciskei. The latter introduced intellectual property legislation in respect of copyright only so it was just the first three that had Trade Marks Registers.

Flag of Venda

Following the end of apartheid, these Registers were generally incorporated into the South African Register unless there were overlapping rights in which case they continued to cover the applicable geographic area (with provisions to cover the whole of South Africa if the overlapping rights lapsed or were cancelled). I have no idea how many Transkei/Bophuthatswana/Venda registrations now exist - I imagine they would be mostly held by local companies and they are relatively few in number. They have a special numbering in place. They are managed by the Companies and Intellectual Property Commission in Pretoria.

The flag of Bophuthatswana

Bophuthatswana was arguably the most well known of the bantustans as it contained Sun City (casinos being illegal in apartheid South Africa) and was the setting of an infamous coup in 1994 that saw the bantustan's last leader, Lucas Mangope, trying to cling to power and an invasion by Eugène Terre'Blanche's Afrikaner Resistance Movement.

Elsewhere in Africa, OAPI has grown at various junctures. Mali joined up in 1984 and was followed in 1990 by Guinea. Other countries have followed suit, but in the case of Guinea and Mali they had Trade Marks Registers of their own prior to OAPI accession (the others were Cautionary Notice countries).

Flag of Guinea

Mali's Register has now ceased to exist, but Guinea's is still - somewhat questionably - operational for renewals, assignments, etc.

Finally, at the tip of Africa is Tangier (sometimes Tangiers). Prior to independence, Morocco was largely governed by France and Spain, except the city of Tangier which was under the administration of various countries as the Tangier International Zone. The city enjoyed libertarianism unlike the rest of Morocco and even much of Europe and became the home for a number of escapist residents. It also had its own trade mark law which remained when it was integrated into Morocco upon independence in 1956.

Flag of Tangier International Zone

Parallel to this was a trade mark regime in "Morocco (Casablanca)"; the Casablanca often being added as this was the location of the Trade Marks Office and to distinguish it from Tangier. Registrations in Morocco (Casablanca) covered the whole of Morocco except Tangier.

In late 2004, a new trade mark law was introduced in Morocco to cover the entire country. Existing Morocco (Casablanca) and Tangier registrations would remain in force, each covering the whole country. Many trade mark owners would register in both. Upon renewal they will now only have to renew one of the registrations. This could be as late as 2024 in view of the 20-year registrations terms governed by the old laws in Morocco and Tangier.

These registrations can all be marked as covering Morocco, but many records may not have been amended to show this so you may still come across registrations in Tangier and/or Morocco (Casablanca).

Pay attention with country codes

Be careful with respect to country codes as codes used for these jurisdictions are often created internally or by database companies and then may come into use for other countries internationally. SS was commonly used for Sabah, but this is now the country code for South Sudan, independent since 2011. I have seen TK used for Transkei, but Tokelau is assigned this country code. Tokelau does not have a trade mark law (New Zealand registrations currently cover the territory) but it does possess a Domain Name Registry using this as its ccTLD.

We can come across many obscure countries when managing trade marks around the world. When it comes to post-registration matters like renewals then it is apparent that we have a few more jurisdictions to take into account.

TMView gets stronger and stronger

Earlier this month the TMView grew with the addition of over 1.1 million new trade marks when the Registers of Croatia, Cyprus, Mexico and Norway were added to the system.

This follows the earlier announcement that Morocco was to be integrated with TMView.

Croatia joined the EU at the beginning of the month.

Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.

Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.

Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.

It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.

TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.

Morocco to join "TMView" project

The TMView system has been a notable achievement driven by OHIM, as I have opined before.

OHIM have recently announced that Morocco will integrate with TMView. While the International Register is already incorporated within TMView and there are plans are to link this with WIPO's Global Brand Database, this does represent the first time that a non-EU country is to join the TMView project.

Over 106,000 Moroccan trade marks are already contained on the Global Brand Database and these should soon be available through TMView, which is arguably an easier to use tool.

Morocco did apply to join (what is now) the EU way back in 1987 but their application was rejected as membership is only open to "European states". Nevertheless, Moroccan-EU relations are strong and this small step is some evidence of this. Morocco often looks north to Europe; it is the only all-African state not in the African Union.

This development paves the way for other non-EU countries to come aboard TMView. Switzerland is probably at the front of the queue given it is already a part of another OHIM-led project, TMclass (recently rebranded from Euroclass) and already has an excellent on-line database available.

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.