Trade Mark Applications  2010 – 2020

Patent Applications  2010 – 2020

OAPI – Pilot project for Online Applications launched

The Organisation Africaine de la Propriété Intellectuelle (OAPI) IP office recently gave notice of the launch of a pilot project to test a new online filing system that is earmarked to go live in 2021. This system allows for the online filing of applications to register trademarks and patents.

In this initial phase, only six accredited firms were invited to participate in the project, including our associated office.

Currently all applications are filed manually at OAPI with a cumbersome payment process and lengthy delays in the issuance of official documents. It is hoped that the introduction of an online filing system will greatly improve efficiencies at OAPI and enhance service delivery to users of the system.

Trade Mark Case Update

The bull fights
In a recent opposition matter before the OAPI Commission, Duncan Taylor the proprietor of the well-known BLACK BULL Scottish blended whisky brand opposed a label mark which wholly incorporated the BLACK BULL trade mark, as well as the word “whisky”. The label mark of concern was filed in classes 32 and 33. The brand owner owns an OAPI trade mark registration for its word mark in class 33 and has used its trade mark extensively internationally and also in many African countries.

The opposition was not defended and was upheld in relation to goods in class 33, although the opposition failed in relation to class 32 goods as the Commission was not convinced that our client’s registered rights in class 33 would extend its rights to goods in class 32. Of course, the opposed mark was inherently misdescriptive of class 32 goods, in that it included the word “whisky” as a prominent element of the mark and the Commission erred in our view in its finding.

The applicant of the opposed mark has since filed an appeal against the decision to refuse registration of its mark in class 33. This is despite the applicant not having defended the opposition in the first instance. Nevertheless, the failure to defend an opposition does not preclude an applicant from appealing an adverse decision. Another interesting point that this matter has confirmed is that, while the OAPI Commission does not follow a formal precedent system, it will take into account its previous decisions, and these are certainly persuasive and worth relying on.

The appeal will in due course be heard by the OAPI Appeals Board.

Annexes to the Revised Bangui Agreement Come into Force
While the full set of proposed revisions to the Bangui Agreement are yet to come into force, pending the ratification by the OAPI member states, certain annexes to the revised Agreement came into effect on 14 November 2020.  These Annexes include: Annex VI on Geographical Indications; Annex VII on Literary and Artistic Property; Annex VIII on Protection against Unfair Competition; and Annex X on Plant Varieties.