It has just been announced that the new OAPI IP laws concerning trade marks, designs, utility models and geographical indications will enter into force on 1 January 2022.

 

The changes introduced by the new law include the following:-

 

1) The definition of a trade mark is broadened to include sounds.

2) The new law extends examination of trade mark applications on absolute grounds, to include the possibility of refusal on the basis that a mark lacks distinctive character or may confuse the public regarding the geographical origin, or the nature or characteristics of the goods or services.

3) Certification marks will be registerable.

4) Trade mark applications will be published for opposition purposes before, rather than after, registration. The opposition term will be reduced from 6 to 3 months, and the term for filing an appeal against opposition decisions will be reduced from 3 to 2 months. Similarly, design applications will be published for opposition purposes, with a term of 3 months within which to oppose.

5) Divisional applications will be possible.

6) There is provision in the trade mark law for the recognition of International Registrations. OAPI joined the Madrid Protocol in 2015 and has been accepting International Registrations in practice, but the new law gives a legal basis for doing so. Whilst the law states that International Registrations will be effective in the OAPI member states that are also members of the Madrid Protocol, OAPI considers its own ratification of the Protocol is sufficient.

7) It will be possible to include goods and service classes in the same trade mark application. Presently, separate applications are required to cover goods and services.

8) It will be possible to file prior (unregistered) trade mark claims before a court of law after registration. Presently, such claims can only be filed at OAPI in the opposition period following publication.

9) Some minor changes to the official fees have been introduced. Most notably, additional trade mark class fees will now be payable for the 2nd and each extra class (applicants will no longer be able to include 3 classes in the basic filing cost).

 

The sections of the new law relating to patents will not be entering into force as yet, but this is expected to happen at some point in 2022.

 


For more information please contact the author, Martin Chinnery, at martin@lysaght.co.uk