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Background

Regional Protection of Trade Marks applicable to Mainland Tanzania and Zanzibar is done by the African Region Intellectual Property Organization (the ARIPO) which was established on 9th December 1976 by the Lusaka agreement in Lusaka, Zambia as an umbrella treaty to foster cooperation in Intellectual Property (IP) matters. ARIPO was developed by several implementing treaties which deal with individual IP rights, such as the Banjul Protocol on Marks (1993). ARIPO’s Banjul Protocol members are mostly English-speaking countries such as Botswana, Eswatini, Lesotho, Liberia, Malawi, Mozambique, Namibia, Sao Tome, and Principe, Tanzania, Uganda, and Zimbabwe. [1] 

Trade Mark Regional Protection

ARIPO deals with the registration of marks and administration of registered marks on behalf of the Contracting States. ARIPO acts under its Secretariat and all applications for the registration of a mark shall be filed either directly with the ARIPO or office of a Contracting State. The office responsible in Tanzania is the Business Registration and Licensing Agency (the BRELA), in which the application is done by the applicant or his duly authorized representative. [2]

When the applicant’s principal place of business or residence is not in the host country of ARIPO or BRELA, the applicant shall be represented by his trademark agent or by a legal practitioner. An application for the registration of Trade Mark for the Regional protection is done by prescribed Form and when the applicant is represented, a power of attorney authorizing the representative is required to be filed together with the application. When the application is filed at BRELA, within one (1) month of BRELA receiving the application, it will transmit the application to ARIPO and inform the applicant of the transmission. [3]

The application for the regional protection of a Trade Mark must contain the following:

  1. Identity of the applicant;
  2. a representation of the mark;
  3. designate the Contracting States in which registration is being requested; and
  4. be subject to the payment of the prescribed fees. [4]

A Mark is filed and processed to ARIPO through electronic form but ARIPO and the contracting State office shall permit the filing of the applications on paper. The ARIPO’s Administrative Instructions sets up the provisions and requirements in the filing and the processing of the applications relating to electronic filing in which these provisions and requirements are in relation to:

  1. acknowledgement of receipts;
  2. procedures relating to the according of a filing date;
  3. physical requirements;
  4. signature of documents;
  5. means of authentication of documents;
  6. the consequences of non-compliance of those requirements; and
  7. the identity of the contracting States communicating with ARIPO and applicants.[5]

The Contracting State shall not be obliged to receive or process ARIPO trademark applications filed in electronic form unless the Contracting State has notified ARIPO that it is prepared to do so in compliance with the applicable provisions and requirements of the Administrative Instructions and no Contracting State which has given ARIPO a notification may refuse to process an application filed in electronic form or by electronic means which complies with applicable requirements under the Administrative Instructions. [6]

When the application is made at BRELA or ARIPO the day that the offices receive the application shall be the date of filing the application and every application for the registration of a mark shall be examined in accordance with the national laws of a Contracting State. [7]

Once the application is duly transmitted to ARIPO from BRELA, ARIPO shall examine the application to determine if it has complied with all the formal requirements. If the application does not comply with the formal requirements ARIPO shall by notify the applicant that his application does not comply with the formal requirements and therefore within two (2) months the applicant must make his application to comply with the formal requirements. [8]

For an application that has been refused by ARIPO, the applicant has a remedy within a prescribed period of time to request ARIPO to reconsider the matter. If ARIPO still refuses the application, the applicant has another remedy to appeal to the Board of Appeal three (3) months from the decision of refusal of ARIPO. The applicant can request to convert the application to a national application and that application is treated in any contracting State as an application according to the national law of that State. [9]

Once ARIPO accepts the application, it shall transmit the application, to all the contracting parties/states for their examination according to their national laws and before the expiration of nine (9) months. The Contracting States must send back a written communication to ARIPO that the registration of a Mark shall have no effect on its territory. The applicant shall be notified of the transmitted application to the contracting states. [10]

When the application is sent to the Contracting States and one among the contracting states refuses the application, it shall give reasons under its national laws for refusing the application. The reasons for the refusal shall be within one (1) month of the decision being communicated to ARIPO which shall without delay communicate the same to the applicant. The applicant shall be given an opportunity to respond through ARIPO to the Contracting State which had refused the application. The decision shall be subject to appeal or review under the national laws of the Contracting State concerned. The appeal or review shall be filed to ARIPO one (1) month from the date of its issuance. [11]

An application for registration of a Mark which has been accepted by the Contracting States which had sent their written communication and Contracting States which had not sent their written communication shall be registered in a Mark Journal and be taken as having been accepted by all the Contracting States. After the lapse of three (3) months of the publication of the Mark in a Mark Journal, ARIPO shall register the mark and upon payment of registration fees USD 100, the registration shall be recorded in the Marks Register, and ARIPO shall issue to the applicant a certificate of registration. [12]

After the publication of the Mark in the Marks Journal of an application, as accepted by the Contracting States, before the registration of the mark, any interested person may lodge a notice of opposition to the application for registration in which notice shall be filed to ARIPO. Thereafter, the application shall be treated according to the opposition procedures laid down under the national laws of the Contracting State. [13]

The registered Mark shall have a life span of ten (10) years, from the date of filing, and shall be subject to renewal for a further ten (10) years, upon payment of the requisite renewal fees. The renewal of the registered Mark must be done before the expiration of the original registration. In the event one fails to renew before the expiration of the original registration, there is a grace period of six (6) months to complete the renewal of the Mark. Failure to renew the registered Mark within the grace period for non-payment of renewal fees, shall cause the registered Mark to be removed from the register. A removed Mark from the register for non-payment of the renewal fees may be restored back to the register upon request by the applicant to ARIPO and subject to the payment of renewal fees plus the Additional Fee for Late Renewal for registration of a Mark which is a 20% surcharge. [14]

The registration of a Mark by ARIPO shall have an effect on all contracting states, in respect to the rights conferred by the Mark as if it was filed and registered under the national laws of each contracting state. In the cancellation of the trademark, the grounds of cancellation under the national laws shall apply such as non-use, where there is fraud in the registration, renewal, assignment, transmission, and breaching of the conditions conferred under the registered Mark and upon cancellation of the Mark from the register the Contracting State which has canceled a Mark within one (1) month of cancellation has to notify ARIPO of the cancellation. [15]

The registration of the Mark by ARIPO in the register marks the regional protection of that Trade and Service Mark as it shall have an effect on all the contracting states who are members of the Banjul Protocol on Marks and therefore the owner of the Mark is protected from other members of contracting states to use his Mark and prevent further infringements to the Mark.

During the pendency of registration or during the application phase, later designations are allowed. Once registered, each mark is treated as if it is a mark registered in each designated state. However the indication of classes of goods or services provided are not used to determine the scope of protection and the law applicable for revocation, cancellation, and opposition proceedings apply.

[1] African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of the Banjul Protocol. 2020. Page 8 & 10.
[2] Section 2:1. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of the Banjul Protocol. 2020. Page 11.
[3] Section 2:2,2:3 & 2:4 African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of the Banjul Protocol.2020. and Rule 5:1. Regulations for Implementing the Banjul Protocol.
[4] Section 3:1. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020
[5] Rule 5bis:1 & Rule 5bis:3. Regulations for Implementing the Banjul Protocol.
[6] Rule 5bis:4 & Rule 5bis:5. Regulations for Implementing the Banjul Protocol.
[7] Section 3bis:1 & Section 6:1 African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020
[8] Section5:1,5:2 Rule 5ter:1 & Rule 6:1. Regulations for Implementing the Banjul Protocol.
[9] Section 5bis:1, Section 5bis:2 African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020 and Rule 6:2 & Rule 6bis:2. Regulations for Implementing the Banjul Protocol.
[10] Section 5:3, Section 5:4 & Section 6:2 African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020 and Rule 6:3. Regulations for Implementing the Banjul Protocol.
[11] Section 6:3 & Section6:4. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020.
[12] Section 6bis:1 & Section 6bis:2. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020.
[13] Section 6bis:4. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020.
[14] Section 7:1, 7:2, 7:3, 7:4 & 7:5. African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020.
[15] Section 8:1 & Section 8:2 African Regional Intellectual Property Organization. Banjul Protocol on Marks. Principal Text of   the Banjul Protocol. 2020.

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