Trademark Registration ARIPO

The African Regional Intellectual Property Organization (ARIPO) is an international organisation for cooperation among African states in patent and other industrial property matters. Trademark protection can be obtained for the following member states: * Botswana * Lesotho * Malawi * Namibia * Zimbabwe * Swaziland * Tanzania * Uganda Further members are: * Gambia * Ghana * Kenya * Mozambique * Zambia * Sierra Leone * Somalia * Sudan

The application for a mark must be filed either directly at the ARIPO Office in Harare, Zimbabwe or via the Industrial Property Office of a contracting state referred to as the Receiving Office. In both cases the filing date shall be the date of receipt of the application in that respective Office. The application may be filed by the applicant or his authorized representative. However, where the applicant's principle place of residence of business is outside the Contracting State of filing, representation shall be mandatory.

The Office shall examine the application for compliance with formal requirements, and accord the appropriate filing date to the application. If the application does not meet the formal requirements, it shall notify the applicant accordingly, inviting him to comply with the requirements within a prescribed period. If the applicant does not comply with the requirements within the prescribed period, the application shall be treated as if it had not been filed. The only recourse available for an application refused is to request that the application be treated, in any designated State as an application according to the law of that State or lodge an appeal against the decision of the office to the Board of Appeal.

If the application complies with the formal requirements at the Receiving Office of a contracting state such a state shall without delay transmit the application to ARIPO. The ARIPO Office shall in all cases ensure that the prescribed formal requirements are complied with and shall so notify each designated State and further request that each designated State examine the application in accordance with its national laws and notify the ARIPO Office of its findings within a prescribed period. On expiration of the prescribed period the Office of ARIPO shall publish the Mark for registration in all those countries where a given mark is considered registrable.

During the pendence of registration or during the application phase later designations are allowed. Once registered each mark shall be treated as if its a mark registered in each such a state. However the indication of classes of goods or services provided shall not be used to determine the scope of protection and the law applicable for revocation, cancellation and opposition proceedings shall apply. The registered mark shall be renewable every ten years and on expiration of ten years there after.

REPRESENTATION

[Section 5 Rule 5 Form M.2]

Representation shall be by a patent or trademark agent or by a legal practitioner who has a right to represent applicants before the Industrial Property Office of the Contracting State with which the application is filed. Where an applicant is represented, the power of attorney shall be filed together with the application or within two months from the date of filing. The power of attorney shall be made on Form M2.

FILING REQUIREMENTS

The application for registration of a mark shall contain a request for registration of mark indicating the name and address of the applicant including his nationality, his domicile and the address of the industrial or commercial establishment. If the applicant is a legal entity as the case may be he shall be required to indicate the nature of the legal entity including the country a territory under whose laws the legal entity is established.

The application should further contain a clear and complete list of the particular goods or services in respect of which registration of the mark is requested, with an indication of the corresponding class or classes in the international classification, as may be prescribed. Declaration of the actual use should be made.

Designation of contracting States and where a mark has been registered or is pending registration in any Contracting State, the owner or applicant or, where applicable, his successor in title shall have the right to designate any other State which subsequently becomes a party to the Protocol. The application for a later designation shall be made on Form M 3 and shall be subject to payment of the prescribed fee on filing or an undertaking to pay such fees within 21 days. Distinctive features such as colour and dimensions should be claimed or reproduced as the case may be.

REPRESENTATION OF MARK

[Section 2 Rule 7]

The mark representation shall be affixed on Form M 1. Marks comprising letters, words, numerals or punctuation signs where no special graphic features are claimed, may be reproduced by typewriter in the appropriate space in the form. One copy of the representation of any other two-dimensional mark shall be affixed to the appropriate space in the form;

Where colour is claimed as a distinctive feature of a mark, the applicant shall be required to append to his application copies in colour of the said mark;

Three-dimensional marks shall contain an indication to that effect.

Where applicable, a transliteration of the mark or of certain parts of the mark, and/or a translation of the mark or of certain parts of the mark shall be required.

RIGHT OF PRIORITY

[Section 4 Rule 8 Form M.1]

An applicant for registration of a mark who wishes to avail himself of the priority of an earlier application filed in a Convention country shall, within six months of the date of such earlier application, append to his application a written declaration indicating the date and number of the earlier application, the name of the applicant and the country in which he or his predecessor in title filed such application and shall, within a period of two months from the date of filing furnish a copy of the earlier application certified as correct by the appropriate authority of the country with which such earlier application was filed.

CLASSIFICATION

[Section 33.3. Rule 4 Form M.1]

The classification of goods and services for the purposes of indicating the list of goods and services shall be the Nice Agreement of 15th June 1957, as revised, concerning International Classification of Goods and Services for the Purpose of the Registration of Marks. Marks relating to figurative elements shall be classified under the Vienna Classification.

ALTERATION OF REGISTERED MARK

[Rule 13 Form 11]

Requests for the recording of changes, such as territorial extension to one or more countries in respect of all or some of the goods and services, transfer, partial assignment for some of the goods and services or for some of the countries, cancellation of the international registration, renunciation in respect of some of the countries concerned, limitation of the list of goods and services, or changes in the name or address of the owner, shall be presented in a single copy, dated and signed by applicant or his representative on Form M 11.

The request for recording of a change shall in all cases indicate:

(i) the number of the mark concerned; and

(ii) the name and address of the owner of the registration.

Where the change of ownership results from a contract, a certified copy of the contract signed by both the holder and the new owner shall accompany the request for the change of ownership.

The request shall be accompanied by the prescribed fees or an undertaking to pay such fee.

REGISTRATION AND PUBLICATION

[Rule 15]

Registration of a mark shall entail recordal in the register and publication of the mark in the ARIPO Journal and as prescribed in the national laws of each designated State. The following particulars shall be recorded in the Register of Marks in respect of each registered mark:-

(i) the number of the application;

(ii) the name and address of the owner of the registration;

(iii) the name and address of any authorized agent;

(iv) the reference to the date and number of registration;

(v) any change in the name of the address of the registered owner of the registration;

(vi) designated States; and

(vii) representation of the mark.

Every alteration, renewal of a registration, registration of licenses, assignment and other similar rights pertaining to a mark shall be recorded in the register and published in the Journal. The applicant shall be issued with a Certificate of Registration, Form M 12 and a copy of the certificate shall be transmitted to each designated State.

DURATION OF REGISTRATION

[Section 7 Rule 12]

Registration of a mark shall expire ten years after the date of registration. A mark shall be registered as of the date of filing of the application for registration, and such date shall be deemed for all purposes to be the date of registration.

Registration of a mark may be renewed for consecutive periods of ten years on payment of the prescribed fee.

Renewal of registration of a mark shall not be subject to any further examination of the mark or to opposition of any person.

The renewal fee shall be paid within the twelve months preceding the date of expiration. A request for renewal shall be made on Form M 10.

Provided, however, that a period of grace of six months shall be allowed for the payment of the fee after the date of such expiration, upon payment of surcharge.

Applications for the registration of a mark shall be filed either directly with the Office or with the Industrial Property Office of a Contracting State, or directly with ARIPO for the applicant whose principal place of business is not in the host country of ARIPO representation is mandatory.

CONVERSION INTO NATIONAL APPLICATION

[Rule 6 Form M.7]

Where the Office refuses an application, the applicant may within a period of three months from the date on which he receives notification of such refusal, request that his application be treated, in any designated State, as an application according to the national laws of that State.

EXAMINATION BY A DESIGNATED STATE

[Section 6 Rule 8 Form M.8]

Every application for the registration of a mark shall be examined in accordance with the national laws of a Contracting State.

Before the expiration of twelve months from the date of the notification of designated States, each designated State may make a written communication to the Office that, if a mark is registered by the Office, that registration shall have no effect on its territory for the reason:- (a) that it does not conform with the formalities required under the national laws; or (b) that, because of the nature of the mark, it cannot be registered or have no effect under the national laws of the State. After the expiration of the said twelve months, the Office shall carry out the registration of a mark which shall have effect in those designated States which have not made the communication. Appeals Applications refused by the office can be reconsidered for registration upon successful appeal before the Board of Appeal. Effect of Registration Marks registered by ARIPO shall have the same effects accorded to Marks registered under the national laws of each state.