Trademark Registration under the Madrid Agreement


     By SCP Global Africa IP

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In the main, there are two requirements for a trademark to stand out as one and be registered under the terms of the Madrid Agreement, to wit: a) it must be distinctive and b) it should not be deceptive. It is rather interesting that while the former requirement is recommend in a trademark, the latter, if found in a trademark would be frowned at.

1) Requirement

In the main, there are two requirements for a trademark to stand out as one and be registered under the terms of the Madrid Agreement, to wit: a) it must be distinctive and b) it should not be deceptive. It is rather interesting that while the former requirement is recommend in a trademark, the latter, if found in a trademark would be frowned at.

a) Distinctiveness

A trademark is distinctive if it makes the goods and/or services of the enterprise, distinguishable from the goods and/or services of its competitors. For example, “Le Boxeur” is a good trademark which Fotso Victor has used to distinguish his matches from other matches. True enough, he wants to say that when you strike his stick of match it lights instantly, just like a good punch from a boxer would send his opponent dazed. Yet, in fact boxing has nothing to do with the striking of matches. On the contrary, “Le Boxeur” would not be a distinctive trademark for the entertainment services rendered by the boxers of a promoter of boxing for, other promoters ought to be allowed to use the term “Boxeur” to describe their services too.

So we could now just add that one of the characteristics of a trademark is that it should not be descriptive.

a) Deceptiveness

When an undertaking claims that the goods for which its trademark is used have certain qualities (or quantities) when in fact they don’t, the trademark is said to be deceptive and this, to the utter detriment of the uninformed consumer. This is why we say advertising should be void of hoax for, trademark is a form of advert. For instance the trademark “100% cotton” for dresses that are not made of pure cotton would be said to deceptive. In the same vein, there are dressmakers in Douala who sew shirts and print on them “Made in Paris”. This is a clarion example of a geographical indication which renders the trademark deceptive.

2) Registration procedure

The process for registration of a trademark under the Madrid Agreement is a straight forward affaire though a little intricate in that the trademark must first be registered in the country of origin of the applicant with nearly no exception. The only scenario that looks like an exception is if the international application is made exclusively under the protocol, in which case, at least the owner must have filed an application for registration in his home country.

After this initial requirement the applicant has to file for international registration with the international bureau of WIPO based in Geneva and in this application he must name the countries in which he intends to protect his trademark. WIPO then checks whether the application is in consonance with the formalities prescribed by the law. It also vets the lists and classes of goods and services to make sure it conforms to the Nice classification. If everything is in order, WIPO registers the mark and forward the application to the designated countries. At the level of each individual designated country, an examination for such things as distinctiveness, deceptiveness and/or conflict with existing trademarks, may be carried out and this may result in refusal of the protection. And whether the protection is refused or accepted in the individual country, the International Bureau must be informed formally.

To have a trademark known and respected in the market place needs time and money. This is why a trademark is considered personal property, however incorporeal it may be. Protecting such property therefore becomes of utmost interest.

ABOUT THE AUTHOR: Feh Henry Baaboh, Esq.
With OAPI Licence n° 0047/OAPI/DG/DPG/SCAJ, Henry, is a Certified Industrial Property Agent. After acquiring sufficient experience in the field, he headed the IP department of a prominent law firm in Cameroon from 1998. Thereafter he created specialized IP partnership SCP Global Africa IP.
Prior to filing, he is sure to revise all IP applications. He keeps track of deadlines. This is most important when priority is claimed. With his meticulous nature, clients are ever satisfied.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.



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