On 11 March 2015, Zimbabwe will become a member of the Madrid Protocol – an international filing system which allows trade mark applicants to designate various member countries in one international trade mark application. The system is cost effective and eliminates vast amounts of paperwork required to file trade mark applications in individual countries of interest, which has made it a popular choice for many trade mark owners.
Zimbabwe will be the 94th member of the Madrid system. OAPI (the African Intellectual Property Organisation) also joins the Madrid Protocol on 5 March 2015. Zimbabwe and OAPI are amongst a few other African countries that are members of the Madrid Protocol – these include Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Sudan, Swaziland, Tunisia and Zambia.
The addition of Zimbabwe as a member state of the Madrid Protocol will therefore provide trade mark applicants with the option of designating Zimbabwe in an international application, together with other member countries of interest.
Local trade mark applications in Zimbabwe can be fairly expensive. Previously, brand holders sometimes filed their trade mark applications in Zimbabwe via the ARIPO system in order to save costs1. The Madrid system should now provide another, cost effective alternative to local trade mark filings.
The concern, however, is that an international registration designating Zimbabwe may not yet be enforceable in Zimbabwe, given that its national laws have not been amended to give effect to the Madrid system and it is unlikely that such an amendment will take place before 11 March 2015, when Zimbabwe will be joining the Madrid Protocol. Until then, an international registration designating Zimbabwe will probably not be enforceable. Therefore, it is not advisable for brand holders to use the international system until such time that the national laws have been amended in Zimbabwe.
Similarly, although Zambia became a member of the Madrid Protocol on 15 November 2001, their national laws have not been amended to date. Any international trade mark registrations designating Zambia are therefore probably also not enforceable. The same goes for a few other African member states which have not as yet enacted their national laws.
The big question is: when will South Africa implement the Madrid system? There have been ongoing discussions with the South African Trade Marks Registry and WIPO, however, there are strict time lines and requirements which are expected of members. It is understood that the South African Trade Marks Office is working towards these requirements, but it is unclear whether there is a specific timetable laid out for achieving compliance.
1 ARIPO is an African regional system in respect of which certain African countries have acceded to the Banjul Protocol and which may therefore be designated in an ARIPO trade mark application. These countries are Botswana, Namibia, Uganda, Lesotho, Liberia, Swaziland, Zimbabwe, Malawi and Tanzania (mainland). However, while some of these countries, including Zimbabwe, have made specific legislative provision for the recognition of ARIPO registrations, others are yet to do so, with the result that an ARIPO registration may not be enforceable in all member countries at this stage.
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