Trade and Service Marks
Membership in International Conventions: OAPI is a member of the Protocol relating to the Madrid Agreement concerning the International Registration of Marks since March 5, 2015, and the Singapore Treaty since February 13, 2016.
Applicant: any individual or corporate body (even non-trading).
Foreigners or nationals not living in one of the member countries: must appoint a local representative.
Kinds of protection: any visible or audible sign used or intended to be used and capable of distinguishing the goods or services of any natural or legal person shall be considered a trademark or service mark.
Marks for services: are allowed. Separate applications are no longer required for goods and for services as of January 1, 2022.
Collective marks: granted to associations, public or private unions whose members may use the mark on conditions to be declared.
Certification marks: are registrable.
Right to the mark: acquired by the first applicant (use no longer gives rise to a right).
Novelty: no examination as to novelty.
Not registrable: marks contrary to public order, proper conduct and law, as well as marks excluded by Article 6 of the Paris Union.
National flags, names or portraits: there is no special prohibition for their registration.
Multi-class applications: possible.
Territory covered: the territories of all member States (see General Information).
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, simply signed (a separate power of attorney is required for each trademark);
2. A representation of the mark;
3. Certified copy of the basic application, where appropriate (within three months).
Recordal of assignments or licenses:
1. 1 original copy of the deed of assignment or license (signed in the actual presence of a Notary Public); certified copies are also admitted;
2. Power of attorney, simply signed (a separate power of attorney is required for each trademark involved).
Recordal of changes of name or address:
1. Power of attorney, simply signed (a separate power of attorney is required for each trademark for which the recordal is requested);
2. For changes of name only: official certificate attesting to such change (without legalization).
Examination: as to formalities and absolute grounds. Appeal against rejection may be lodged within sixty days.
Division of application: possible at any stage before registration.
Publication of the application: the application is published in the Official Gazette for opposition before registration.
Opposition: any person may oppose the registration of a mark within three months of publication of the application.
Publication: granted trademark is published in the Official Gazette.
Delivery of documents: filing certificate immediately, registration certificate approximately one year after.
Duration: ten years from the date of filing.
Renewal: after each period of ten years upon payment of the prescribed renewal fee. Grace period: six months, with a surcharge.
Proof of use: use is no longer requested for renewal purposes. However, trademarks registered before February 8, 1982, which have already been renewed after 1982, might still be subject to use requirements. Similarly, trademarks filed before February 28, 2002, might remain subject to use requirements according to the transitional provisions, but the law is not very clear about it. In practice OAPI will not request proof of use in any case.
Opposition to registered marks: no longer possible.
Marking: not required but advisable (“marque déposée”).
Use: the mark must be used within five years from application date and not left unused for more than five years. In case of non-use, except when there exists a legitimate excuse, the proprietor may be deprived of his rights. Any interested person may lodge a corresponding request before the civil courts. Effective sales of goods bearing the trademark in at least one OAPI country are requested as proof of use.
Modification of the Registration
Modification of the mark: not allowed, even when filing a renewal. However cancellation of some classes is allowed at renewal time (but not extension).
Assignment and license: assignment is possible with or without the goodwill. Assignment and license must be in writing, actually signed in the presence of a Notary Public. Registration is compulsory within one year.
Infringement: the law prohibits infringement of a mark, fraudulent affixation of a mark belonging to another, or sale of goods bearing an infringing or fraudulently affixed mark. The owner of the mark may file an action with the civil courts or inferior criminal courts for cessation of further infringement, damages or restitution of unjustified gains; fine and imprisonment may also be inflicted.