The Madrid Protocol in Africa: A deep exploration of the challenges

The Madrid Protocol’s drawcard is the global protection of trade marks by filing and maintaining a single international trademark application for protection in up to 131 countries, eliminating the tedious task of filing, recording changes and renewing in each member country.
 
It is, however, a procedural system, providing an optional route to secure a national trade mark right. While WIPO examines the international trade mark application for formalities, it must still be examined, and can be protected or refused, according to the laws of each designated member country. The procedure for obtaining rights and their scope are ultimately defined by the national or regional applicable law.
 
Using the Madrid Protocol appears to be a no brainier for brand owners. However, in Africa, there are various considerations which impact on the validity and effectiveness of international trademark registrations (“ITMRs”). Extending an ITMR to some African countries, may not be the optimal choice. Only 24 out of 54 countries/regional organisations in Africa belong to the Madrid Protocol. Any cost saving and perceived advantages, may simply not be worth the challenges and uncertainties that we deal with at grassroots level.
 
Essential requirements for ITMRs to be valid and effective
 

• ITMRs should be expressly recognised by domestic legislation. African countries are usually divided between civil law countries, where international treaty obligations are accepted as binding at national level, and common law countries, which require that international treaties are enacted into national law.
• The National IP Offices should process and examine all Madrid Protocol designations and communicate any objections to WIPO within the strict timelines (12-18 months).
• The National IP Offices should maintain a sole digital trade marks register which contains national and international trade marks.

 
The effectiveness and efficiency in some of the jurisdictions are not clear, either because the National IP Offices have not adopted the necessary procedures to implement the Protocol or simply because of the lack of resources, training, digitisation of records and administrative backlogs.
 
Madrid Protocol African Member Countries
 
At present, Algeria, Botswana, Cape Verde, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, OAPI, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia, and Zimbabwe, are member countries.
 
Some of Africa’s biggest economies, are not yet member countries, including Angola, Ethiopia, Nigeria, South Africa, Tanzania and Uganda.
 
As far back as September 2003, South African approved the ratification of the Madrid Protocol, but accession has been kept on ice since to allow the South African National IP Office, to reduce the time period for examination, among other considerations. At a recent meeting of South Africa’s Parliament’s Portfolio Committee on Trade, Industry and Competition, a decision was made that the national legislation will now be amended to allow South Africa to finally accede to and domesticate the Madrid Protocol. The Trade Marks Amendment Bill is due to be submitted to the Executive in February 2025. This is a riveting development for international big brands.
 
African countries where ITMRs are effective
 
The Protocol is effective in seven member countries, that is, Algeria, Egypt, Madagascar, Morocco, Mozambique, Rwanda and Sudan. The Protocol only functions effectively in member countries with modernized laws, fully digitized systems, and examination practices that adheres to WIPO’s timelines.
 
ITMRs are not effective everywhere
 
In the other African Madrid Protocol member countries, many obstacles remain before the system can be relied upon to secure enforceable trade mark rights. As a firm, we are aware of an increasing number of cases where the owners of ITMRs were under the mistaken belief that they secured enforceable statutory rights in some member countries, to only learn at a later stage, when enforcement becomes a priority, that no enforceable rights were established on a national level at all.
 
As regards to Eswatini, Lesotho, Sierra Leone and Zambia – these are all so-called ‘common law countries’. An international agreement can only become part of the domestic law of a common law country if the agreement is expressly enacted into the national law by an Act of Parliament. This has not happened in these four countries. The effect of this is that an ITMR cannot be lawfully processed or enforced in any of these countries. The only reliable protection is by means of a national trade mark registration. In addition, the current practice in these countries is such that ITMRs are not processed at all or are an afterthought – proceeding tacitly.
 
Interestingly, Zambia does not make provision for service marks, yet numerous ITMRs that cover services designate Zambia. Undoubtedly, ITMRs have no effect insofar as services. Another inconsistency relates to the registration term, under the Madrid Protocol the term is 10 years, but in Zambia it is seven years from the filing date and, after that, every 14 years following the filing date.
 
Zambia passed the Trade Marks Bill 2023 in order to modernise the Trade Marks Act. It is not yet clear when the new legislation will come into effect, but some of the significant changes include the provision of service marks and the recognition of the Madrid Protocol.
 
Organisation Africaine de la Propriété Intellectuelle
OAPI is a regional Protocol that covers the 17 countries listed below. Here there is no country designation – a registration automatically covers all member countries. There is examination on absolute grounds, but not for prior rights. The members are: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo. 
 
OAPI is a key player to the Protocol but the problem is that it has failed to amend its law, the Bangui Agreement, to accede to the Madrid Protocol – such an amendment would require ratification by member states. Instead, OAPI ‘acceded’ by a simple resolution. OAPI has stated that it is authorised to sign IP treaties, such as the Madrid Protocol, on behalf of its member states, but there is a concern that OAPI does not have the power to do this. As of 1 January 2022, provision for ITMRs has been incorporating in the Bangui Accord.
 
Although ITMRs are now covered by the Bangui Agreement, and would probably be recognised by the Courts, we still have some concerns about their validity. It is a grey area, but the relevant procedures are in place.
 
Contesting ITMRs
 
In 10 Madrid Protocol member countries – Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Namibia, Sao Tome, Tunisia and Zimbabwe –the validity of an ITMR designation can be challenged.
 
Although there are some examination, the refusal rate is unnaturally low in these countries. This suggests that the examination is perfunctory. A lack of proper examination may, of course, be a ground for challenging a registration on the basis that it was wrongly accepted, especially in countries where national applications are examined thoroughly.
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Issues of a procedural nature
 
Issues of procedural nature also continue to rear its head. These issues relate to the fact that IPAS Madrid Module receives incoming electronic transactions from WIPO and transmits them to the National IP Offices of the designated countries and OAPI. There are some migration anomalies:
 
A failure to record limitations
 
One anomaly relates to the fact that WIPO does not automatically record limitations. For example, a trade mark proprietor may request limitations of the goods or services in particular designated countries, yet these goods/services will remain in the ITMR, and they can indeed form the subject of a later designation. The effect of this is that the national registration does not always reflect the international register.
 
No Statement of Grant or publication for opposition
 
It is not always clear whether an ITMR was indeed granted, and therefore enforceable under national law. Where no Statements of Grant of Protection are issued, it may be difficult to prove registered rights for the purpose of infringement proceedings and filing a complaint with Customs.
 
Namibia, for example, does not currently issue Statements of Grant of Protection, nor does it automatically advertise the ITMR for opposition. It requires the appointment of a local trade mark attorney to do so.
 
A positive development for Namibia, which is currently undergoing a Madrid Protocol automation process, is the recent announcement by the Registry that it will be issuing Statements of Grant in respect of Namibian designations.
 
ITMRS which were accepted and advertised prior to the implementation of the automation process (i.e. October 2024 – before this time all processes were manual) does require a resubmission of official documents and copies of advertisements for the Statement of Grant to be issued.
 
Provisional refusals
 
There are time limits for responding to a provisional refusal. In Namibia, for example, the period is 30 days (extendible to 180 days), whereas in Mozambique it is 30 days, with no extension possible. If the IP Office or WIPO delays notification of a provisional refusal, it can make life very difficult for a brand owner to deal with signing a Power of Attorney and responding properly to the refusal. Extensions of time will be necessary where this is allowed under local laws, and which in turn undermines initial cost savings using the Protocol.
 
WIPO does not recognise refusals or oppositions submitted late. Some National IP Offices refuse marks or allow oppositions, outside the applicable time limit (12 or 18 months), caused by challenges in terms of resources and capacity.
 
This discrepancy can lead to a situation where WIPO’s database shows a mark as ‘registered’, while the national register indicates it as ‘refused’ or ‘under opposition’.
 
Summing up
 
The Madrid Protocol has made significant progress in Africa, but its effectiveness and interpretation varies across the continent. While the Protocol is reliable in African countries with effective participation, a strategic approach is crucial to identify the drawbacks. Brand owners should review their trade mark portfolios in consultation with local counsel to select the best route to registration. We recommend audits be carried out to determine whether new national or regional trade mark applications are necessary to compensate for any defective or unenforceable ITMRs within the portfolio.
 
Shamin Raghunandan
Partner, Spoor & Fisher, South Africa
Direct: +27 12 676 1138
Email: s.raghunandan@spoor.com
 
Shamin is a Trade Mark Practitioner with an LLB degree from the University of KwaZulu-Natal. She is an Attorney of the High Court of South Africa and a Notary Public.
 
With more than 10 years of experience, Shamin specialises in domestic and international trade mark law, including clearance searches, filing and prosecuting trade mark applications, and portfolio management.
 
She has particular expertise in advising and assisting clients with planning and securing trade mark protection across Africa, ensuring comprehensive intellectual property coverage for her clients.