Published Date: July 20, 2020

The Madrid system, which makes provision for international trade mark registrations (“IRs”) filed through the World Intellectual Property Organization (“WIPO”), is considered to be a one-stop solution for the registration of trade marks worldwide, and serves as an alternative to individual national applications. Although the Madrid system has many benefits, some risks accompany this system.

IRs are based either on a national trade mark application or a registration from a trade mark office of a member state of the Madrid system,  known as the “office of origin”, and the trade mark application or registration is known as the “basic application or registration”. An IR is dependent on the validity of the underlying basic application or registration for the first 5 years. If the basic application or registration is amended, refused, or cancelled within the 5-year dependency period, the IR will be affected in the same way.

Due to the risks associated with a central attack on the basic application or registration, or the possible refusal of the basic application by the office of origin, within the 5-year dependency period, the Madrid Protocol has a “safety-net” provision, which allows for the transformation of an IR to a national application. In terms of Article 9quinquies of the Madrid Protocol, when an IR is cancelled at the request of the office of origin, the holder of the IR can file a national application for the registration of the same trade mark with the national office of any of the contracting parties which were designated by the IR. This application, known as the transformation application, will enjoy the same filing date as that of the IR, or the date of the subsequent designation. If the IR enjoyed priority, the transformation application will enjoy the same priority date.

The transformation application will only be possible if the following requirements are met:

  1. the transformation application should be filed within three months from the date on which the IR was cancelled (i.e. the cancellation date specified in WIPO’s cancellation notification);
  2. the goods and services of the transformation application should be identical to the goods and services covered by the IR; and
  3. the transformation application should comply with all the requirements of the national trade mark office, including the requirements relating to official fees.

The transformation of an IR is only available when the IR is cancelled as a result of the basic application or registration being abandoned or cancelled at the office of origin. If the IR holder decides to cancel or abandon the IR itself, or allow the IR to lapse, the holder cannot make use of Article 9quinquies to transform the IR into a national application while keeping the date of the IR. Transformation of IRs can therefore only follow a cancellation of the IR requested by the office of origin based on the abandonment or cancellation of the basic application. 1

Contracting parties to the Madrid Protocol are required to domesticate the provisions of the Protocol to give effect to their obligations under their membership and the IR system. Although 22 African jurisdictions/regions have acceded to the Madrid Protocol, only a few members have enacted any national legislation to give effect to the Protocol, and even fewer members’ legislation and regulations explicitly make provision for the transformation of IRs to national applications.

One of the biggest problems these Africa Registries are facing, with respect to the processing of IRs, is the strict examination timeline (12-18 months). If the examination period expires and WIPO has not received any objections to the IR from the national office, according to WIPO, the IR is deemed registered in that specific designation. This creates a situation where, according to WIPO, the IR has been registered in the member country, however, the IR may not have been  examined and published by the national office, as would be required under the national legislation. Accordingly, many of the national registers of African member countries, and WIPO’s register, are not reflective of one another.

The biggest problem in filing an application for the transformation of an IR, is that the national register will not necessarily contain the details of the designation of that state under the IR. The process involved in obtaining and verifying this information sometimes takes the applicant beyond the stipulated 3 month time period. If the IR’s details cannot be verified on the national register within the 3 months, the only solution is to file a national application, which will then not reflect the earlier IR date. It is therefore advisable for an applicant to initiate the transformation process as soon as they receive the cancellation notification from WIPO, so that in the event that the IR first has to be verified on the national register, there is enough time to proceed.

In practice, we have had various measures of success in filing transformation applications in Botswana; Kenya; Mozambique; Rwanda; Namibia; Madagascar and Sao Tome and Principe. The jurisdictions in which it has been almost impossible to proceed with transformation applications include Sierra Leone; Liberia; Lesotho; Ghana; Swaziland and Zambia, the reason being either the IR’s details cannot be verified on the national register in time, or due to a lack of enabling legislation the Registry simply does not know how to process transformation applications. Please note that these lists are not exclusive.

In conclusion, although the Madrid Protocol has a “safety-net” provision for the transformation of IRs to national applications, this “safety-net” has a few big holes which need to be considered when dealing with IRs in Africa.  Brand owners should be aware, although an IR might seem to be the one-stop solution for their trade mark registrations, that they face a real risk of losing their IR in Africa if their basic application or registration is under attack. We continue to recommend the filing of national applications in contracting states whose domestic legislation does not make specific provision for IR’s and transformation applications.

Please refer to our Madrid Memo for further information in respect of the applicability of the Madrid System in Africa.

1 Guide to the International Registrations of Marks under the Madrid Agreement and the Madrid Protocol, WIPO Publication No. 455(E) (2019) Paragraph 53.03, Page 70.