The African Regional Intellectual Property Organisation ("ARIPO") is one of the cost effective regional systems in Africa that allows a brand holder to file a single trade mark application in different classes, designating various territories. The other trade mark regional system is the Organisation Africaine de la Propriété Intellectuelle (OAPI) which covers the following territories in West Africa: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
With effect from 3 August 2021, the Gambia will become the newest member of the Banjul Protocol on Marks under which the Gambia can now be designated under ARIPO trade mark applications. The other states that are current members of the Banjul Protocol are: Botswana, Eswatini, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé and Príncipe, Tanzania (mainland), Uganda and Zimbabwe.
Despite the Gambia's accession to the Banjul Protocol, the Gambian Industrial Property Act has not been amended to make provision for the recognition and enforcement of ARIPO trade mark registrations. This means that any designation of the Gambia under an ARIPO application will have no effect in the Gambia at this stage. The same is true for the following other member states who have not domesticated their national legislation as yet to recognise ARIPO trade mark registrations: eSwatini, Lesotho, Liberia, Tanzania and Uganda.
If brand holders are looking for a cost effective trade mark filing option in Africa to cover a few territories, we recommend that clients consider filing an ARIPO application designating the following countries only: Botswana, Malawi, Mozambique, Namibia, São Tomé and Príncipe, and Zimbabwe, since these are the only member countries which have made legal provision for the recognition and enforcement of ARIPO registrations domestically.
If the remaining member states (eSwatini, the Gambia, Lesotho, Liberia, Tanzania and Uganda) are of interest and until such time that these member states recognise ARIPO registrations under their local law, we recommend that clients should rather protect their trade marks by filing national applications in these territories to ensure that their trade marks will be regarded as being valid and enforceable. For all remaining territories in Africa that may be of interest to clients, it is necessary to file national trade mark applications per territory to ensure comprehensive protection.
Reviewed by Manisha Bugwandeen-Doorasamy, an Executive in ENSafrica's IP department.
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