Trade Marks 2019 Comparisons

Last Updated March 01, 2019

Law and Practice

Authors



D. Moukouri & Partners (Douala - HQ) is a leading corporate and commercial law firm in Cameroon, offering a full range of services to clients in the private and public sectors, institutions and multinational corporations based in Africa, North America, South America, Europe, Asia and Australia. D. Moukouri advise on commercial deals, private equity, investment projects in Cameroon and on cross-border transactions. The firm’s Information Technology – Intellectual Property – Counterfeiting Department has assisted several start-ups in setting up their businesses and has provided advice to clients for the launching of innovative solutions in eBanking, eHealth, eLearning, and eTourism. The firm has a renowned practice in counterfeiting proceedings and other actions relating to infringements of IP rights. D. Moukouri has several years of experience in advising brands, including many famous names, on implementing anti-counterfeiting strategies, and have advised on matters in Cameroon, in the Republic of Congo, Nigeria and the USA. In the last 12 months the firm has assisted clients – including leading oral care trade marks-owners – in seizures of over USD6.5 million-worth of counterfeit products; additionally, through enforcement measures, the firm has secured the recovery of over USD3.6 million damages in infringement seizures proceedings.

The Agreement Revising the Bangui Agreement of 2 March 1997 on the Creation of an African Intellectual Property Organisation (The Bangui Agreement) provides for different types of trade marks whose rights are protected by statutory law, such as collective marks and service marks.

The only way to obtain ownership rights over a mark is by filing for registration as provided in the Bangui Agreement.

The registration of trade and collective marks procedures are the same. The only exception is that the collective mark shall include the approved rules for its use.

The African Intellectual Property Organisation (OAPI) has a Special Register of Marks which is made public.

The Bangui Agreement provides for a Special Register of Marks, from which information and copies of documents relating to one mark may be obtained.

It is normal practice to search for prior trade marks before applying to register a mark. An availability search enables the applicant to find out if the mark is already registered. The availability search is carried out at OAPI.

The requisite information is: the name and address, nationality and domicile of the applicant. In case of a legal entity, the signature, identity and title of the signatories should be specified. The class of goods and services to which the mark applies and information on payment are also provided. Where an agent has been appointed, the agent’s name and address should also be indicated.

Any person having the legal capacity to apply can file for registration.

Any visible sign used and capable of distinguishing the goods or services – including particular surnames, fanciful designations – can be registered. The packaging of products, labels, wrappers, emblems, prints, stamps, seals, vignettes, borders, combinations or arrangements of colours, drawings, reliefs, letters, numbers, devices and pseudonyms can also be registered.

Collective marks are rights recognised by the Cameroon legal system through rules of general application. However, specific rules apply where such rights refer to public entities.

Filing for registration of a mark is done at the African Intellectual Property Organisation.

The application should be addressed to the Director General of the African Intellectual Property Organisation with (i) sufficient number of copies, (ii) proof of payment of filing fee to the organisation, (iii) an unstamped power of attorney if the applicant is represented, (iv) a reproduction of the mark, including a list of goods or services to which the mark applies with the corresponding classes of the international classification of goods and services for the purpose of the registration of the mark. A statement shall be drawn up by OAPI and specify the date and time of submission.

OAPI shall examine whether the conditions of form have been met with and whether the prescribed fee has been paid.

Any application in respect of which the conditions of form have not been observed shall be irregular. The irregularity shall be notified to his or her applicant or his or her agent, who shall be invited to put the documents in order within a period of three months following the date of notification. That period may be extended by 30 days in the case of proven necessity at the request of the applicant or his or her agent. An application put in order within the said period shall retain the date of the original application.

Where rectified documents are not produced within the period allowed, the application for rectification of the mark shall be rejected. Rejection is pronounced by the Director General of OAPI.

Where the organisation finds out that the conditions of form have been met, it shall register the mark and publish the registration. The legal date of the registration shall be that of the application.

A multi-class application is provided for by the Bangui Agreement.

The system permits the usage of a mark in commerce pending the outcome of the registration certificate. The agreement makes it clear that the registered mark is valid for a period of ten years. Applications are filed at the head office of OAPI in Yaoundé, Cameroon; renewals can only be valid once the correct fee prescribed for renewal – which is CFA400,000 – has been paid.

An application for a trade-mark registration can only be made to one trade mark to be covered by one or more classes of goods or services.

The process for registration usually takes six to 12 months upon the filing date. An applicant who masters the procedure can proceed on his or her own but it is always advisable to use the services of a trade-mark attorney. The OAPI headquarters is based in Yaoundé, Cameroon, with branches in each member state. There is no fixed fee for an attorney for a single word mark in one class. The attorney freely negotiates his or her fee.

The registration of a trade mark can be refused by the trade-mark office based on absolute grounds when it is devoid of distinctiveness, for any of the following reasons:

  • it consist of signs or matter constituting the necessary or genetic designation of the product or the composition thereof;
  • it is identical to a mark that belongs to another owner and is already registered, or the filing or priority date of which is earlier, and which relates to the same or similar goods or services, or where it so resembles such a mark that it is liable to mislead or confuse;
  • it is contrary to public policy, morality or the law;
  • it is liable to mislead the public or business circles, notably as to the geographical origin, nature or characteristics of the goods or services in question;
  • it reproduces, imitates or incorporates armorial bearings, flags or other emblems, the abbreviated name or acronym or an official sign or hallmark indicating control and warranty of a state or intergovernmental organisation established by an international convention, except where the competent authority of that state or of that organisation has given its authorisation.

The agreement provides for the possibility to appeal against the rejection or refusal of the application. The applicant has 60 days in which to appeal against the decision. In this case, the said commission shall be the judge and the arbiter of final instance of the application in question.

OAPI does take into consideration the existence of prior rights in its examination of an application for registration and the following rights could be raised by the earlier applicant through:

  • a written declaration stating the date and number of the earlier application, the country in which it was filed and the name of the applicant;
  • a certified true copy of the earlier application.

Third parties do have the right to participate during the registration procedure. Any interested party may oppose the registration of the mark by sending it to the organisation within a period of six months from the date of publication. Interested parties will give a written statement, setting out the reasons of his or her opposition, which reasons must be based on an infringement or of a prior-registered right belonging to the opposing party.

Application for trade marks can be amended when there is an irregularity. The irregularity is notified to the applicant, who shall be invited to put the documents in order within a period of three months following the date of the notification.

The Bangui Agreement clearly provides that the owner of a mark may, by contract grant to a person, whether natural person or legal entity, a licence enabling him or her to use that mark for all or some of the goods or services in respect of which the mark is registered. So, assignment of a mark or granting a licence can only be possible after the mark has been registered.

The remedy for a denial to register a mark is through an appeal. The applicant, in the case of rejection for his registration, has six days to appeal against the decision. In this case the said commission shall be judge and the arbiter of final instance of the application in question.

The agreement does not provide for such requirement, but practice permits the use of the mark pending the issuance of the registration certificate. The requirement that establishes the genuine use of a trade mark is evidence of registration of the mark.

Trade-mark application should be fully handled in a single application form with all the required information.

The term of protection is ten years from the date of filing of the application for registration. The only way the mark can be renewed is if the applicant has paid the correct fee prescribed by regulation, which is paid in the last year of the ten-year period. However, a six-month period of grace is allowed for payment of the said fee after the end of the year.

Failure to renew the trade mark after the ten-year period of validity and the period of grace will lead to its exhaustion or forfeiture.

Cameroon participates in the Madrid system through Resolution No 53/25 of 14 December 2013 authorising the adhesion of OAPI to the Madrid Protocol concerning the registration of international marks. The demand is made on a pre-established form provided for by the OAPI for the registration of international trade marks as provided for by the administrative instruction No 102 relating to the registration of international marks.

Providing incorrect information shall render the application irregular. Such irregularity shall be notified to the applicant or to his or her agent, who shall be invited to put the documents in order within a period of three months following the date of notification. The period may be extended for 30 days at the request of the applicant. Where the rectified documents are not produced within the period allowed, the application for registration of the mark shall be rejected. The Director General of the OAPI pronounces the rejection.

There is no specific provision on the updating/refreshing of a design mark.

Neither the agreement nor the administrative instruments provides for the use of a particular symbol to denote official registration.

The requirements which apply to the assigning of a trade mark must be evidenced in writing and must also be registered. For restrictions, the duration of the licence may not be longer than that of the registration of the mark, the licence shall not be assignable to third parties, and the licensee shall not be authorised to grant sub-licences.

Once the licence contract has been put down in writing, it shall be entered in the special register of marks of the organisation. It shall not be enforceable against third parties until it is entered in the said register and published.

The assignment needs to be registered in a special register of marks kept by the OAPI. If this condition is not met with, the assignment shall not be enforceable against third parties. There are no risks existing between the time taken for the assignment and its registration.

The Administrative Instruction No 120 of 27 May 2005 by the General Manager, provides for documents which can be registered in the special register of marks' securities. If this is provided for in the administrative instrument, it therefore means that marks can be given as securities.

The only requirement is that it must be drawn up in writing and signed by the parties on pain of invalidity. The licence must also be entered in the special register of marks for licences. An exclusive licence is granted which shall preclude the licensor from granting licences to other persons.

The owner of the mark may by contract grant to a person – whether natural person or legal entity – a licence enabling him or her to use the said mark for all or some of the goods or services in respect of which the mark is registered.

The duration of the licence cannot be longer than that of the registration of the mark.

The licence contract shall be drawn up in a special register of marks of the organisation, and it shall not be enforceable against third parties until it is entered in the register and published.

The licence contract shall be entered in the special register of marks of the organisation. If it is not recorded in the special register of marks, it shall not be enforceable against third parties. The local law does not provide for any risk existing in the gap between the licence being recorded and its registration.

The Bangui Agreement does not specifically make mention of the granting of perpetual licences, but equally it does not place a restriction on the limitations relating to the extent, the scope of duration of use of the mark.

A further requirement is the obligation of the licensee to abstain from any act liable to harm the validity of the registration of the mark.

The legal ground for filling an opposition must be based on the infringement of a trade mark or service mark or of a prior-registered right belonging to the opposing party. This must be done within a period of six months from publication.

The Bangui Agreement provides that an opposition may be filed by any interested party. The local law does not make it an obligation to be represented by an attorney, but it is advisable always to be represented by an attorney. The attorney’s fee is freely negotiated between the opponent and the attorney.

The opposition is done by way of application addressed to the Director General of the OAPI. The application must be accompanied by proof of payment of the opposition tax and other relevant documents. The organisation, before taking a decision on the opposition, shall hear the parties.

A legal remedy lies in an appeal from the OAPI’s decision on the opposition with the High Commission of Appeal within a period of three months from the date of receipt of notice of the decision by the interested parties.

The trade mark-owner can bring civil or criminal actions for infringement. Any action for infringement of a subsequently registered mark whose use has been tolerated for three years shall be inadmissible except where it has been filed for registration out of bad faith.

A trade mark-owner can initiate infringement proceedings before the courts of first instance in order to get an injunction order, and before the High Court to claim for damages caused.

The trade-mark office decision on infringement actions shall lead to the cancellation of the registration, and the decision shall be published in the official bulletin of the OAPI.

The alleged infringer can start declaratory judgment proceedings which gives the court the possibility to determine the rights of parties without ordering anything to be done. This usually happens when the alleged infringer also revendicates ownership rights on the trade mark.

The question of which courts will have jurisdiction to hear trade-mark matters at first, second and third instance will depend on the amount of damages that the plaintiff is claiming for infringement of his or her trade mark.

Pursuant to the Board of Directors Resolution No 56/23 of 1 March 2017 creating and instituting a Mediation and Arbitration Centre, OAPI uses mediation and arbitration as means to settle disputes arising from holders of rights. This provision is not a prerequisite in filing a law suit. The parties have the latitude of choosing the mode of settlement. All the remedies provided by law applies to marks that have been registered.

It is not mandatory to be represented by a lawyer, but it is always advisable to be represented by a lawyer.

Interim or preliminary injunctions are available, and this is usually granted by the court upon an application motion ex parte made to the court. This is usually granted when there is an emergency and when it is feared that the opposing party may perform (or continue to perform) an act which is prejudicial to the subject matter in question.

The defendant can file his or her own submissions to establish his/her rights and attach documentary evidence thereto.

The local legal system has put in place a mechanism by which a party to a trade-mark dispute can obtain information and evidence from the other party or third party such as interrogatories and discoveries. This is usually done in practice by a motion or notice to the party or parties concerned. The law does not provide at what stage this is is done, but its admission or denial is fully at the discretion of the judge.

The initial pleading standards should contain a statement of material facts on which the party pleading relies. It should not contain evidence or law. There are no special law suits for trade-mark matters. It is possible to supplement pleadings with additional arguments – this usually happens where there is, for instance, a modification in the amount of damages.

Representative and collective actions are allowed. This is permitted when the representative has a power of attorney to represent the person initiating the action. For collective action, the person acting on behalf of the collective mark must have the consent in writing of the other members.

There is no restriction on the rights of the trade mark-owner. Once the trade mark has been registered and the registration certificate issued, he or she has exclusive rights to use the mark. He or she might only be limited in the event that he or she assigned the mark to a third party.

The necessary parties to an action for infringement are (i) the owner of the mark, (ii) the beneficiary of an exclusive right of use if so provided in the contract, (iii) any party to a licence contract in which proceedings were brought by another party. Third-party beneficiaries of an exclusive right of use can file for infringement provided it is stipulated in the contract. He or she can do so if the owner fails to act after having been called upon to do so. A mark-owner can take action to stop infringement provided that the mark has not been used for a period of three years.

The following may constitute trade-mark infringement:

  • any sign that is identical to a mark that belongs to another owner and is already registered;
  • any sign that resembles a mark that is liable to mislead or confuse;
  • any sign that is likely to mislead the public or business circle of the goods and services in question.

The owner of the mark or the holder of exclusive right of exploitation must establish the fact that the sign has been marked.

The agreement provides for defences in the case of a priority claim – which must be filed within three months following the filing of the application – and also if the application for registration was filed in bad faith.

The role of the experts is to establish whether the sign that has been marked has the same characteristics or properties as the original sign. The courts will always take into account the opinion of the expert.

Trade-mark infringement is punishable by the agreement. The offenders shall be punished by a fine of CFA1 million to CFA6 million and with an imprisonment term of three months to two years. This decision can be enforced through administrative channels, as provided by Administrative Instruction No 121, whereby the most diligent party shall communicate the decision to the OAPI where it shall be registered in the special register of marks and published.

Customs officers has the power to seize counterfeited imports. This is usually done by a written complaint addressed to the Director General of Customs indicating all relevant information necessary for the seizure. The customs will seize the goods and, with the help of a bailiff, an inventory of the goods seized shall be made; interested parties shall be appointed custodian of the goods until a court decision orders their destruction.

Cancellation of a mark, as provided for in the agreement, can be ordered by the court at the request of any interested party for a mark that has not been used in the national territory of one of the member states. Where the protection conferred by a registered mark has not been renewed owing to circumstances beyond the control of the owner of the mark, the owner or entitled persons may apply for its restoration, against payment of the requisite renewal fee and of a surcharge of the amount which shall be fixed by regulation within a period of six months from the date the said circumstances ceased to exist and at the latest within a period of two years from the date on which renewal was due.

Cancellation is ordered by the courts, which means the action is brought before the civil courts and, when the decision becomes final, it shall be notified to the AIPO which shall record it in the special register of marks.

The act provides for a period of five years prior to the request to file for cancellation. The registered owner has the possibility of raising legitimate arguments as to why the cancellation should not be granted.

The Bangui Agreement gives the possibility to any party having an interest to file for cancellation. The person must prove that the mark has not been used for an uninterrupted period of five years prior to his or her request. This is satisfied by the preponderance of evidence.

The agreement provides that the cancellation may be extended to all or part of the goods or services for which the mark was registered, if within a period of five years they have not been used in the national territory of one of the member states.

Since it is the court that orders the cancellation of a mark, amendment is not possible; amendment is made possible only at the level of registration when irregularities arise.

The agreement does not specify if both actions can be brought together. However, actions for infringement can be filed at the moment the owner of the right realises the trade mark has been infringed, while request for cancellation can be filed when the mark has not been used for an uninterrupted period of five years.

There are no special procedural provisions for trade-mark proceedings. The applicable procedure is that of the civil law courts.

The cases are determined by legal judges and the parties do not have an influence on who is the decision-maker.

The parties can decide to settle the case through court mediation. This is usually done by the parties through a written agreement which is formalised by the court and is then binding to all parties

If the other court proceeding is a criminal matter on infringement rights, then there is a parallel civil matter; therefore, the legal principle of “criminal matter will stay proceedings in the civil action” will apply until there is an outcome in the criminal matter.

As provided for in the agreement, persons who infringe the trade marks shall be punished by a fine of CFA1 million to CFA6 million, with an imprisonment term from three months to two years. Offenders may also, in addition, be deprived of the right to participate in elections to professional groups such as the chamber of commerce and industry and the chamber of agriculture for a period not exceeding ten years. The court may also order the confiscation of goods bearing the counterfeited mark, even in the case of acquittal, and also of the implements or tools that served specifically for the commission of the offence.

Declaration of non-infringement is a right/remedy for a prevailing defendant.

The remedies that apply for trade marks for services and goods are the same that apply for collective marks.

There are no special provisions when in comes to appeal for trade-mark procedures.

An appeal implies a full review of the facts of the case.

There is no timeframe for decisions to be rendered by the court of appeal. It all depends on the nature of the case.

Once a mark is devoid of distinctiveness, or resembles another mark that it is liable to mislead or cause confusion, interested parties can file for an opposition.

The agreement provides that the owner of a well-known mark – within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property and Article 16, paragraph (2) and (3) of the Agreement on Trade Related Aspects of Intellectual Property Rights – may apply to the court for the invalidation in the national territory of one of the member states of the effects of the filing of a mark liable to be confused with his or her own.

The rules that apply for geographic indicators are those mentioned in the Agreement Revising the Bangui Agreement of 2 March 1977 on the Creation of an African Intellectual Property Organisation.

Certification marks are usually given for compliance with defined standards but are not confined to any membership. They may be used by anyone who can certify that the products involved meet certain established standards. The Bangui Agreement does not regulate certification marks but rather collective marks. In many countries, the main difference between collective marks and certification marks is that collective marks may only be used by a specific group of enterprises – for example, members of an association – while certification marks may be used by anybody who complies with the standards defined by the owner of the certification mark.

Any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise shall be considered a trade mark or service mark, including in particular surnames by themselves or in a distinctive form.

Security for costs will have to be paid – this is 5% of the amount claimed for damages.

Costs generally include security for costs, which is 6% of the amount claimed, procedural charges (including bailiff fee and costs), as well as costs for the filing and enrolment of the matter on the cause list.

Costs of litigation are borne by the plaintiff; each party to the case is responsible for his or her lawyer's fee. The losing party is not required to pay the prevailing party’s attorneys fee – however, the court may order the losing party to pay procedural charges claimed by the plaintiff.

Alternative dispute resolution is a common way of settling trade-mark cases through arbitration and mediation. The organisation renders its decision after hearing all the parties.

Trade marks and copyright are two different intellectual property rights which are governed by separate rules and regulations. Copyright is governed in Cameroon by Law No 2000/011 of 19 December 2000 on Copyright and Neighbouring Rights.

D. M & P Attorneys at Law

1068, Blvd Ahmadou Ahidjo
opposite Afriland First-Bank
Akwa, Douala
P.O. Box 2799
Douala
Cameroon

+237 233 42 25 44

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info@moukourilaw.com www.moukourilaw.com
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Law and Practice

Authors



D. Moukouri & Partners (Douala - HQ) is a leading corporate and commercial law firm in Cameroon, offering a full range of services to clients in the private and public sectors, institutions and multinational corporations based in Africa, North America, South America, Europe, Asia and Australia. D. Moukouri advise on commercial deals, private equity, investment projects in Cameroon and on cross-border transactions. The firm’s Information Technology – Intellectual Property – Counterfeiting Department has assisted several start-ups in setting up their businesses and has provided advice to clients for the launching of innovative solutions in eBanking, eHealth, eLearning, and eTourism. The firm has a renowned practice in counterfeiting proceedings and other actions relating to infringements of IP rights. D. Moukouri has several years of experience in advising brands, including many famous names, on implementing anti-counterfeiting strategies, and have advised on matters in Cameroon, in the Republic of Congo, Nigeria and the USA. In the last 12 months the firm has assisted clients – including leading oral care trade marks-owners – in seizures of over USD6.5 million-worth of counterfeit products; additionally, through enforcement measures, the firm has secured the recovery of over USD3.6 million damages in infringement seizures proceedings.

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