The Reform of Trademark Protection in the OAPI Region: A Pragmatic Advancement of the Bamako Act

The revision of Annex III of the Bangui Agreement, adopted through the Act of December 14, 2015 commonly referred to as the Bamako Act, forms part of a broader movement to modernize industrial property legislation across the member states of the African Intellectual Property Organization (OAPI). Twenty-four years after the organization’s creation and sixteen years after the first version of this Annex, it had become imperative to adapt regional positive law to international standards, to the demands of the digital economy, and to the growing challenges of combating counterfeiting. The new text does more than renovate existing mechanisms, it ushers in a new paradigm: one of trademark law built on clarity, procedural rigor, and convergence with the most advanced legal systems, all while respecting African specificities.

Unlike the 1999 Act, which was largely modeled on the French Intellectual Property Code and rooted in civil law tradition, the 2015 Act reflects an autonomous ambition: to establish a coherent and independent regional trademark law, partially hybridized by international and comparative law influences. This is evidenced by innovations relating to the nature of protectable signs, the structure of opposition and litigation procedures, the recognition of contractual practices, and the enhanced role of collective marks. This article analyzes these developments by highlighting their ruptures, continuities, and future prospects, in light of comparative law, international economic law, and the emerging jurisprudence of OAPI and other jurisdictions.

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I. Redefining Distinctive Signs: Towards the Protection of Non-Traditional Marks

The 1999 version of Annex III defined trademarks narrowly: only visible signs were permitted, excluding by default sound, olfactory, three-dimensional, or motion marks, in contrast with contemporary legal scholarship. The 2015 Act broadens this definition to include "visible or sound" signs and provides an illustrative list: words, designs, shapes, holograms, color combinations, computer-generated images, and features characteristic of services (Art. 2).

This expansion enables the registration of marketing realities such as jingles, bottle shapes (e.g., the French case of the Chanel No. 5 bottle), or even families of marks, as recognized in North American practice. This shift signals the transition from a formalist to a functionalist approach, where the emphasis lies on distinctiveness rather than the material nature of the sign.

However, unlike EU law (post-Sieckmann ruling, ECJ, December 12, 2002) or U.S. law under the Lanham Act, the Bamako Act does not provide specific criteria for graphical representation or sensory identification. The absence of precise standards on the admissibility of non-visual signs creates interpretative uncertainty that only future decisions by the OAPI Board of Appeal may resolve.

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II. Streamlining Registration Procedures

A major criticism of the previous Agreement concerned procedural weaknesses: no provision for divisional applications, weak substantive examination, and lack of transparency in opposition proceedings. The new Act addresses these issues systematically.

First, it introduces the possibility of filing divisional applications (Art. 17), akin to Article 44 EUTMR and the Madrid System, offering strategic flexibility for managing portfolios, especially in cases of partial objections or negotiations.

Second, while maintaining formal and substantive examination, including absolute grounds for refusal such as deceptiveness, descriptiveness, or public order concerns, the Act introduces a preliminary publication stage. Every properly filed application must now be published, triggering a three-month opposition period. Although the OAPI system does not include an observation period for third parties as under French law, this restructuring marks a methodological turning point. The new opposition process is thus distinct from the former one, which resembled a post-registration cancellation procedure.

The Act also establishes clearer deadlines, rectification mechanisms, and enhanced publication requirements. It strengthens the enforceability of prior rights in opposition proceedings (Art. 22), aligning with TRIPS Article 16 and WIPO guidelines.

However, OAPI continues to exhibit institutional centralization: it holds investigatory, registration, and appellate functions (via the High Commission of Appeal). Unlike the EUIPO (appeals go to the EU General Court), the USPTO (with appeals to federal courts), or ROSPATENT in Russia (subject to judicial review by the Moscow Court of Arbitration), OAPI provides no external judicial remedy. This institutional fusion raises concerns regarding transparency and legal certainty due to the absence of systematic publication of decisions.

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III. Expanding Trademark Ownership Litigation

Two major innovations deserve particular attention: the dual mechanism for ownership claims and the transformation of the old cancellation procedure into a forfeiture action.

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a) Dual Ownership Claim Mechanisms

Article 40 of the 2015 Annex III introduces the possibility for the rightful owner to bring a claim before national courts if the registration was obtained fraudulently or in violation of the law. This action did not exist under the 1999 Act and now creates a direct bridge between title ownership and national judicial jurisdiction. It is inspired by Article L. 712-6 of the French Intellectual Property Code and resembles the equity-based systems of Anglo-American law (first-to-use vs. first-to-file).

Yet the Annex sets no limitation period for this action, contrary to other annexes of the same Agreement. According to legal scholar Maitre FADIKA MADIA, this may be an oversight, especially since other 2015 Bangui Agreement annexes generally impose a three-year period. In the absence of a specified limitation, this action is not time-barred under current OAPI law, a potential source of legal uncertainty. Given the Annex only entered into force in January 2022, forthcoming national case law will shape the direction of this procedural innovation.

Additionally, the administrative ownership claim procedure before OAPI, formerly embedded in Article 5 of the 1999 Act, is now codified in Article 16 of the 2015 Act. This provision no longer refers to the implementing regulation but sets out procedural details, including a reduced time limit from six to three months post-registration publication, likely to ensure legal certainty and deter dilatory claims.

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b) Substantial Reform of the Forfeiture Mechanism

The former "cancellation action" under Article 24 of the 1999 Act is replaced by a forfeiture action, now codified under Article 39. This action may be brought in cases of non-use for five consecutive years or if the mark has become generic or misleading, the latter being a notable innovation. Forfeiture is now the consequence of a successful action.

By treating non-use as a standalone ground for forfeiture, the 2015 Act aligns with the EU (EUTMR Art. 58), U.S. (Lanham Act §1127), Japanese (Trademark Act Art. 50), and Korean (Trademark Act Art. 119) systems. All penalize unused registrations to prevent trademark hoarding. This enhances the utilitarian logic of trademark law: protection is granted only to marks that serve their market-distinctive function.

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IV. Enforcing Trademark Rights: The search for effective remedies

The Bamako Act significantly strengthens procedural tools for right holders facing trademark infringement. Three areas are worth highlighting: civil litigation, customs enforcement, and damages.

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a) Improved Infringement Action

Article 49 of the new Annex III expands the infringement action to any act damaging a registered mark, provable by any means. While the merits-based litigation framework remains largely unchanged, the major innovation lies in allowing interim measures (injunctions) without waiting for a final ruling, akin to U.S. Lanham Act §34 preliminary relief.

This is unprecedented in francophone Africa, raising questions about practical enforceability, given the lack of specialized courts, uneven technical expertise, and procedural burdens. Only proactive jurisprudence can render this innovation effective.

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b) Customs and Administrative Enforcement

Article 66 formally introduces border measures against suspected counterfeit goods at import or export. Modeled on EU Regulation 608/2013, it allows suspension of release for free circulation.

Yet this remains a preventive tool. Without follow-up seizure or full litigation, it holds no probative value. Unlike the Brazilian (Recife Protocol, 2006) or South African (Customs and Excise Act sec. 113) frameworks, the OAPI text lacks provisions for technical authentication or sampling procedures.

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c) Minimal Framework for Monetary Compensation

Article 54 introduces objective criteria for damages: lost profits, unjust enrichment, and moral harm. This multifactor approach aligns with the economic value of trademarks and allows for broader damage assessment.

Still, the OAPI leaves compensation to national courts without unified benchmarks, unlike the EU Directive 2004/48/EC (which permits lump-sum damages). This may lead to inconsistency and under-compensation.

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Conclusion:

The 2015 Bamako Act represents a substantial transformation of trademark law in the OAPI region. By embracing non-traditional marks, restructuring procedures, clarifying legal remedies, and aligning with international standards, it constitutes a much-needed normative upgrade.

However gaps remain, notably the absence of external judicial review, ambiguity around limitation periods, and insufficient technical guidance for new types of marks. The success of this reform will ultimately hinge on its administrative implementation, evolving jurisprudence, and future regulations.

From a comparative law perspective, OAPI has equipped itself with a coherent and potentially influential legal instrument for African legal regionalization. The 2015 revision is not a terminus but a foundation. It demands ongoing interpretative effort and renewed trademark governance in francophone Africa.

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Main Legal and Normative Sources

Bangui Agreement:

• Bamako Act of 14 December 2015, Annex III relating to trademarks for goods and services (entered into force in January 2022).

• Bangui Agreement of 2 March 1977 revised in 1999 (former version of Annex III).

International and Comparative Instruments:

• Regulation (EU) No 608/2013 concerning customs enforcement of intellectual property rights.

• Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

• EUTMR: Regulation on the European Union Trademark.

• Lanham Act (United States), 15 U.S.C., notably Sections §34 (injunctions) and §1127 (abandonment/non-use).

• Japanese Trademark Act.

• Korean Trademark Act.

• Customs and Excise Act (South Africa).

• Recife Protocol (Brazil), 2006.

Case Law:

• ECJ, Sieckmann, 12 December 2002, Case C-273/00.

• Louis Vuitton Canada Inc. v. Yang, 2015 (Federal Court of Canada).

Foreign National References:

• French Intellectual Property Code:

  • Article L. 712-6 (ownership claim).

  • Article L. 716-6 (interim injunction).

• Indian Commercial Courts Act (2015) and related case law.

• Brazilian and South African customs enforcement mechanisms.

Doctrinal References:

• Maître FADIKA MADIA, Commentary and Annotation of Annex III of the Revised Bangui Agreement of 2015, Juriscope, 2022.​​​

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