Introduction

The African Regional Intellectual Property Organization (ARIPO) which was established on 9 December 1976 was originally known as ESARIPO denoting English speaking countries in Africa. The equivalent organisation covering French speaking countries in Africa is known as OAPI. ARIPO is a multi-national organization with headquarters based in the Belgravia suburb of Harare, Zimbabwe. The first ARIPO trade mark application was filed on 6 March 1997 and almost 3200 trade mark applications have been filed in ARIPO since that time, although not all applications reached registration for one reason or another.

The Banjul Protocol was adopted on 19 November 1993 and empowers ARIPO to register marks centrally for those ARIPO member states which are its signatories. Countries which have contracted and become party to and thus may be designated in terms of ARIPO’s Banjul Protocol on Trade Marks so far are Botswana, Lesotho, Liberia, Malawi, Namibia, São Tomé & Príncipe, Swaziland, Tanzania, Uganda and Zimbabwe.

The name Tanzania is derived from the original states of Tanganyika and Zanzibar, the two states having united in 1964 to form the United Republic of Tanzania. Tanzania has a separate IP registration system from the island of Zanzibar. ARIPO has in the past advised that applications designating Tanzania are presently deemed to include Zanzibar but this is in doubt seemingly due to politics prevailing within Tanzania and Zanzibar.

One may designate any or all of the abovementioned states when filing a trade mark application, the only limitation being that Malawi does not cater for registration of marks covering service classes. If one does not designate a particular state at the time of filing, but a decision is made for a new designation after filing the initial application, one would have to file a fresh application for registration, designating the state or states not designated in the original application. The only provision for adding a state to an initial application after filing is if a new state becomes party to the Banjul Protocol subsequent to the filing or registration of the original application. This does not apply to states which were already party to the Protocol at the time of filing the original application.

Basic filing requirements are as follows:

  • Power of Attorney;
  • Sworn English translations of any document not in English;
  • declaration of actual use of the mark or intention to use the mark ;
  • accompanied by an application for the registration of a Registered User of the mark;
  • If the mark is in foreign characters (eg. Arabic, Chinese), an English translation (and/or transliteration)thereof must be supplied;
  • Full name and physical address of applicant, and specification of goods or services (one cannot claim “all goods” or “all services” in a particular class, one has to specify the goods or services to be protected);
  • For marks filed in logo format in colour one must claim the specific colours included in the mark using Pantone colour codes if deemed necessary.
  • ARIPO may charge to reclassify goods and services claimed under an ARIPO application if not classified by an applicant or if incorrectly classified and not in accordance with the latest edition of the Nice classification of goods and services which is used for the registration of trade marks. ARIPO currently uses the 13th Edition of the Nice Classification.

The duration of an ARIPO trade mark registration is an initial term of ten years, renewable for further successive periods of ten years. One registration certificate is issued by ARIPO listing any or all designated states covered by the particular mark. Registration can usually be expected within 15 to 18 months from filing, subject to possible delays on the part of ARIPO in attending to publication and issuance of registration certificates.

Examination of applications should be conducted nationally by each designated state. In practice examination reports are not issued by all of the abovementioned states. Where an examination report is not issued by a particular state, by default the trade mark application will proceed to publication and registration in that state once the stipulated period has expired.

Pre-filing searches should also be conducted nationally as the number of applications filed through ARIPO as opposed to nationally in each state is relatively small.

A trade mark granted under ARIPO should have the same effect as a trade mark granted under the national law in a designated state. However it is important to note that of the 10 contracting countries to the Banjul Protocol, only Botswana, São Tome & Príncipe and Zimbabwe have properly domesticated the Protocol in their national legislation to date. All contracting members are countries in which an international agreement can normally only become part of domestic law when enacted into the national law by the national legislature. ARIPO’s stance however is that an international or regional law overrides a national law in the event of a lack of harmonisation in respect thereof. In the event that an applicant has enforceability concerns as a result of the failure of a particular country to domesticate the Protocol, individual national applications filed on a state by state basis may be preferable.

Honey & Blanckenberg is able to assist with ARIPO trade mark filings as well as all associated applications such as renewals of existing registrations and recording data changes for trade mark owners (change of address, change of name, assignment to a new owner). You may contact us for further information including the costs associated with ARIPO trademark matters. It will be a pleasure to be of service to you!

Harare, March 2018

Christopher Kimberley

Partner

Intellectual Property

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