Life after Madrid: Challenges arising from the Madrid Protocol

On December 11, 2014, the Government of The Republic of Zimbabwe deposited with the World Intellectual Property Organisation (WIPO), its instrument of accession to the Protocol to the Madrid Agreement Concerning the International Registration of Marks, commonly known as the Madrid Protocol. The Protocol entered into force three months later on March 11, 2015.

The accession came after much debate and objection from stakeholders. Legal practitioners and intellectual property agents objected to accession on the basis that, inter alia, Zimbabwe did not have the legal framework in place to support the Protocol; the Zimbabwe Intellectual Property Office (ZIPO) lacked capacity to assume the additional responsibility of administering Madrid marks; the absence of a demand by resident businesses and local trade mark proprietors for the Madrid filing system; and the negative impact of accession on the practice of intellectual property law by legal practitioners in Zimbabwe.

Lack of legal framework

The Protocol was only domesticated in Zimbabwe with effect from July 1, 2016 and the Trade Marks (Madrid Protocol) Regulations, 2017 were promulgated on April 13, 2017. Effectively, it was only possible to designate Zimbabwe in an international application from April 13, 2017 when both the domesticating and implementing legislation was in force.

In the period between March 11, 2015 and April 13, 2017 Zimbabwe was designated in 2170 international applications. These applications were not processed by ZIPO at the time due to lack of implementing legislation. The majority of these applications have proceeded to registration without examination or publication due to the expiration of the refusal period. It is therefore quite conceivable that there are now confusingly similar or identical marks on the ZIPO Register as a result of the lacuna created by acceding to the Protocol prior to putting the legal frame work in place. The validity of these designations is now in question until such time as the matter is clarified in a court decision.

Lack of capacity

It is common knowledge to the Zimbabwean intellectual property practitioner that prior to accession ZIPO had capacity issues, mainly emanating from a shortage of labour. This resulted in inordinate delays in the trade mark registration process and an immense backlog. However, ZIPO made efforts to clear the backlog and to decrease the lead time for registering trade marks in the period immediately prior to accession to the Protocol.

Currently the national trade mark registration period is approximately 8 to 24 months. It is also to be noted that ZIPO is currently the front runner in examining and issuing examination reports under the Banjul Protocol on Marks. However, some agents contend that this improvement in capacity in the trade mark registration process is as a result of diverting resources from other ZIPO work, such as the processing of renewals which have a backlog dating as far back as 2011.

That said, the improvement in capacity should reflect in ZIPO’s processing of trade marks filed under the Madrid System, which have only been processed since April 13, 2017. However, it is to be noted that until June 2017 applications filed as far back as September 2016 were not appearing on the ZIPO system due to staffing shortages in their IT sector. This issue has since been addressed and the ZIPO system is seemingly up to date. Zimbabwe opted for an 18 month refusal period and with the improvements at ZIPO. It would seem that ZIPO currently has the capacity to examine and advertise the international applications within the stipulated period.

Capacity issues may arise during the opposition process, however, as ZIPO has a backlog in this area with indefinite delays being experienced in the hearing of opposition matters. This issue will need to be addressed as trade mark rights holders need to have confidence that the system not only provides for the registration of trade mark rights but also affords protection for such rights. The absence of the capacity to protect the rights eliminates the need to register them.

Absence of demand by resident businesses

One of the main selling points of the Protocol to Zimbabwe was that the Protocol would allow trade mark owners who are nationals of, or established in, Zimbabwe to file a single international application to ZIPO with the convenience and cost efficiency of paying one fee for the simultaneous protection of trade marks in multiple countries; essentially opening up the world market to Zimbabwe. Undoubtedly this is advantageous to trade mark owners in countries with productive and growing economies. However, in Zimbabwe this has not been the case.

A study of the statics provided on the Madrid Monitor shows that while Zimbabwe has been designated in 2597 applications to date, only one application has been filed which originated from Zimbabwe. Furthermore, this one application was not filed by a Zimbabwean entity but by a Canadian company. Contrary to the contention that the Madrid System would open up the world market to Zimbabwe, Zimbabwe, through the Madrid System, has instead become a deposit box for trade mark owners from other countries.

Furthermore, WIPO official fees need to be paid directly to WIPO by the trade mark owner. In the event that any of the Zimbabwean trade mark proprietors have an interest in filing using the Madrid System, the prevailing exchange control regulations in Zimbabwe would make it difficult, if not impossible, for the average Zimbabwean trade mark owner to make payment of the requisite fees.

Negative impact of accession on the practice of intellectual property law in Zimbabwe

Local trade mark practitioners have intellectual property practices that are largely comprised of trade mark filings. Prior to accession to the Madrid Protocol, the trade mark registration process in Zimbabwe was territorial. Trade mark applicants, both local and foreign, wishing to register their trade marks were required to engage legal practitioners or trade mark agents in Zimbabwe. The exception to this territoriality was the ARIPO system.

The ARIPO system allows for trade mark registration in Zimbabwe through ARIPO using trade mark agents in other ARIPO member states. The system is reciprocal in that it also allows Zimbabwean legal practitioners and trade mark agents to file applications designating other ARIPO member states.

The bulk of trade mark filings in Zimbabwe originate from foreign trade mark owners. The advent of the Madrid System means that foreign trade mark owners wishing to register their trade marks in Zimbabwe are no longer required to engage legal practitioners or trade mark agents in Zimbabwe, while practically no trade mark owners are filing through the system from Zimbabwe. This has led to the depletion of the practices of intellectual property law practitioners.

Conclusion

It would seem that for the most part the objections raised prior to accession were justified. However, the Madrid Protocol is here and it is here to stay. The challenges faced are not insurmountable, but it is imperative that issues such as those created by the delay in domestication and implementing legislation and capacity issues at ZIPO are addressed if the System is to be effective.

Harare, 20 December 2017