The key changes from the amendments to the Bangui Agreement

On 2 January, a series of major changes to the Bangui Agreement – the governing convention for the OAPI – entered into force. Namely, Annexes III, IV and V of the revised Bangui Agreement, which introduced a range of significant changes to the trade mark registration process in the OAPI, including changes that impacted the registration of trade names and industrial designs.

Although there are some expectations regarding future changes in registering patents, these amendments did not include anything regarding this IPR.

Here is the summary of some of the significant changes that entered into force in January 2022, which include new types of trade marks and updates in filing among other revisions:

• The definition of a ‘trade mark’ has been expanded to also include sound marks and audiovisual marks.
• It is now possible to register certification marks in the OAPI.
• Both goods and services can now be included for multi-class trade mark applications.
• Divisional multi-class applications are now possible. For example, applicants can divide the application and proceed with its registration in the other classes to overcome provisional refusals where a trade mark is refused in some of the classes.
• The OAPI Registry’s trade mark examination practice remains focused on formalities and absolute grounds. Trade mark applications will now be published for a 3-month opposition period. After the trade mark is registered, the same mark will be published again to notify third parties that rights have been granted. However, oppositions will not be possible after the trademark has been registered.
• Third parties are now entitled to file what is known as ‘claim of ownership objection’ during the opposition period on the basis of prior use made of a trade mark. If an opposition is successful on the basis of prior ownership, the OAPI Registry will assign the trademark application to the successful claimant.
• The revised Bangui Agreement now formally recognises the validity and enforceability of International Registrations under WIPO’s Madrid system designating the OAPI.
• Regarding trade mark enforcement, customs authorities can now confiscate counterfeit products on the basis of a trade mark registration. Brand owners can initiate criminal or civil proceedings within 10 days from the seizure of suspected counterfeit products.
• It is now possible to protect geographical indications (GIs) under the revised Bangui Agreement. GI protection is also extended to agricultural and artisanal products.
• Industrial design applications will now be published for a period of 3 months (opposition period) before the final registration.

The OAPI also published a new schedule of official fees, which became effective from 1 January 2022. Notable changes include trade mark filing fees, which were slightly reduced, although the official filing fees no longer apply for 1-3 classes as was the case previously. Accordingly, the official filing fees correspond to filing a trade mark in each class, including second and third classes in cases involving multi-class applications.

In addition, new administrative instructions were also issued, introducing a new format of official trade mark filing confirmations issued by the Registry.