Changes to the OAPI system

In 2019 we reported on the significant changes that are coming to OAPI, the regional IP system that applies in much of French-speaking Africa. The OAPI system is governed by a treaty known as the Bangui Agreement, and it is this agreement that is being amended. Brief details of the proposed changes appear at the foot of this note.

As we reported previously, the changes will only come into effect when they have been ratified by 12 countries, two thirds of the OAPI member states. At the time of our 2019 report, just seven member states had ratified the proposed changes. We now understand that 11 member states have ratified the changes, and that a 12th member is expected to do so very shortly - that country is Cameroon and we understand that parliamentary approval has already been secured, although there are still certain administrative steps involved.

Once these administrative steps have been completed the changes to the OAPI system should become operational. But we understand that there are likely to be further delays - the provisions relating to trade marks will seemingly only come into effect in 2021, whereas the provisions relating to patents may only become operational in 2022.

The changes in brief

Changes of a general nature

Provision for the deferral of fees; the introduction of substantive examination; provision for appeals against rejections; the introduction of mediation and arbitration; the improvement of anti-counterfeiting, enforcement and border measures; continuation of the process of digitisation; confirmation that the civil courts of the member countries have the right to rule on the validity and ownership of all IP rights.

Changes to trade mark law

Provision for international registrations; an extension of the definition of a trade mark to cover non-traditional marks; the introduction of protection for certification marks; provision for goods and services to be included in a single application; substantive examination on absolute grounds; publication after filing; provision for third-party opposition; a five-year prescription term for infringement claims; Customs Watch provisions; extended protection for Geographical Indications.

Other changes

For patents there will be substantive examination and opposition; for industrial designs there will be provision for opposition; copyright law will see overall modernisation.

We will provide a further update in due course.

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Date published: 9 September 2020
Author: Spoor & Fisher

Tags: OAPI trade marks patents substantive examination