TRADEMARKS FILING AND PROSECUTION IN ARIPO
The African Regional Intellectual Property Organization (ARIPO) is an inter-governmental organization that facilitates cooperation among Member States in intellectual property matters. ARIPO currently covers 22 member states i.e. Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sao Tome and Príncipe, Sierra Leone, Kingdom of Eswatini, Cabo Verde, Somalia, Sudan, Swaziland, Tanzania, Uganda, Seychelles, Zambia and Zimbabwe.
Further, ARIPO trademark system is governed under the Banjul Protocol (adopted on November 19, 1993, at Banjul, The Gambia) and currently the protocol is operational in 12 state members i.e., Botswana, Cape Verde, Kingdom of Eswatini, Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, Sao Tome and Principe, Tanzania, Uganda and Zimbabwe.
Dates on which each State became party to the protocol are as under:
| STATE | DATE |
| Botswana | October 29, 2003 |
| Cape Verde | October 14, 2022 |
| Eswatini | March 6, 1997 |
| The Gambia | August 3, 2021 |
| Lesotho | February 12, 1999 |
| Liberia | March 24, 2010 |
| Malawi | March 6, 1997 |
| Mozambique | August 5, 2020 |
| Namibia | January 14, 2004 |
| Sào Tomé and Príncipe | February 27, 2016 |
| Uganda | November 21, 2000 |
| Tanzania | September 1, 1999 |
| Zimbabwe | March 6, 1997 |
ARIPO operates a multi-class system of filing. However, a single application filed in ARIPO does not give automatic protection in all the member countries. The applicant will be required to designate the countries of interest for an ARIPO application.
In case an Applicant does not wish to designate all the member state initially and wishes to cover only specific countries, then the remaining countries can be added by way of subsequent designation to the same application/ registration.
Once the subsequent designation of a country is filed, the filing date will be deemed to be the date of the earlier application. Further, the date of subsequent designation will be the date when the application is received by ARIPO Office and the period of registration/ protection will expire on the same date as the earlier registration.
Trademark in ARIPO may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | African Regional Intellectual Property Organization |
| Nice classification | Yes |
| Filing principle | First-to-file |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Power of Attorney simply signed Certified copy of the priority document if claimed, with English translation. Note: The priority document can be filed within three months from the filing date. |
| Requirements Details for filing | Name and address of the applicant, clear representation of the trademark, list of goods and/or services, dimensional, graphic or photographic reproduction, a declaration of a actual use or intention to use the mark |
| Prosecution process | Filing , examination, publication of the mark in the trade mark journal opposition (within 3 months after the publication date) registration and renewal |
| Registration term | 10 years from the date of registration |
| Renewal term | 10 years |
Trademark searches in ARIPO
Under the “First to File” principle, if any other applicant files application for an identical or similar trademark used for identical or similar goods and services after the first applicant has applied, the later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in ARIPO can be conducted for word mark, numbers, etc. An official search can be conducted at the records of the African Regional Intellectual Property Organization. However, the official website encourages you to conduct a similar mark search on an e-service portal of ARIPO to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
Trademark word search edition of ARIPO follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in ARIPO to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in ARIPO. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in ARIPO can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in ARIPO
A person may file multi-class or single class trademark application in ARIPO.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in ARIPO
Ordinary trademark applications filed in ARIPO are applications without claiming any priority. Multi class trademark applications may also be filed in ARIPO. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in ARIPO /Convention trademark applications ARIPO:
A priority trademark application may be filed in ARIPO. A priority trademark application should be filed in ARIPO within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in ARIPO within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
ARIPO follows the nice classification of classes. ARIPO uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Formality Examination
The ARIPO Office will examine the application as to formality and it entails checking the application form is duly completed as per the prescribed requirements.
The ARIPO Office can refuse application due to noncompliance with formal requirements. Further, applicant request the office to reconsider the refusal
If the Office still refuses, the applicant can appeal against the decision to the Office of the Board of Appeal or may within three months from the date of refusal request that the application be treated in any designated state as an application according to national law of that state (conversion).
However, the decision of the board of appeal is appeal is final.
Time Frame for Formal Examination: The Examiner will examine within 4 months. In the absence of objection, ARIPO will issue a Notice for sending the application to the designated States for substantive examination.
Substantive Examination
Substantive examination is conducted by a designated state according to their national laws. Each of the designated states is given nine months within which to notify the ARIPO Office in writing (after the notification by ARIPO Office that the mark shall have no effect in that state registered.
The designated state should give reasons for its refusal according to the national laws and this is communicated to the ARIPO Office.
The office then communicates the refusal to the Applicant who will give an opportunity to respond either through the Office or the designated state concerned.
The refusal is subject to appeal or review under the national laws of the designated state. The mark application may proceed to registration with respect to other designated states which did not object the said application.
Time Frame for Substantive Examination: Designated States will have between 9 and 12 months to examine the application and inform ARIPO.
Trademark Publication in ARIPO
After the examination process is completed and applications accepted by the national offices are then published in the trade mark journal.
The interested party shall within 3 months after the date of publication can file a notice of opposition to registration of the said trademark.
Trademark Registration in ARIPO
Once the trademark application is successfully passed the publication and the fee for registration has been paid, a registration certificate will be issued for a period of 10 years from date of filing of the application and the registration certificate is issued.
Trademark Renewal in ARIPO
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.
Grace Period: The grace period is (6) six months by submitting surcharge fee for filing the renewal in ARIPO.