Ratification of Comoro islands to AIPO agreement
We are pleased to inform you that the Comoro islands have recently ratified the Bangui agreement creating the African Intellectual Property Organization widely known as AIPO.
The ratification of the Convention automatically implies accession to the AIPO jurisdiction which presupposes that all IP filings and protection in the said country shall henceforth be governed by the laws and procedures of the AIPO. Consequently, an application filed for the protection of an intellectual property in the new country or any of the sixteen countries shall automatically cover the new member.
The effective date of accession is fixed for the 25th of May, 2013 herein referred as “the Effective Date”.
Note that this admission undoubtedly has some legal implications both in the mergence and extension of intellectual property rights. On trademark issues we would like to illuminate the following repercussions on the admission of a new member state.
I. Registered Trademarks
All registered trademarks prior to the entry of the new member shall remain valid for the entire sixteen countries but its validity can be extended to the Comoro Islands. Owners of trademarks shall be obliged to file applications for the extension of their protective rights to cover the Comoro Islands.
Meanwhile, all trademarks registered and existing in the Comoro Islands prior to the “Effective Date” shall be extended to the sixteen countries of the AIPO by filing an application for extension of rights.
II. Trademarks pending registration at the AIPO
Trademarks already filed at the AIPO Trademark Office of which registration and publication are pending can equally be extended to the new member. Where applicant for the registration of a trademark had filed before the Effective Date but the Certificate of Registration has not been issued on proof of receipt of a Notice of Acceptance, can proceed to file an application for extension.
III. New Trademark applications
All new applications for the registration of trademarks filed in the AIPO shall cover the Comoro Islands if filed after the Effective Date of the latter’s admission into the AIPO.
Any fresh application filed before the 25th of May, 2013 in either AIPO or the Comoro Islands shall only have effect in the jurisdiction filed.
Except where an applicant is claiming conventional priority rights, we advise that any instruction to register a trademark in the AIPO or in the Comoro Islands be filed as from the 26th of May, 2013 so as to benefit from a wider protection.
Consequently, all applications for the registration of trademarks filed after the Effective Date is excluded from any extension formalities.
IV. Renewals of Trademarks
It is well known law that the validity of a registered trademark in the AIPO is ten (10) years commencing from the date of filing the application for registration. Henceforth, all trademarks due renewal in the AIPO Registry and which renewal due date falls after the Effective Date that is beginning from the 26th May 2013 shall automatically be renewed to cover the Comoro Islands. In this case, applicants shall be exempted from extension formalities.
Furthermore, all registered trademarks in the Comoro Islands whose renewal is due after the Effective Date shall be renewed to cover the AIPO countries.
The renewal fee shall be levied in accordance with the rates laid down in the AIPO Official schedule of fees for trademark matters in both cases. The same official fee shall be paid for trademarks due renewal in the AIPO and trademarks due renewal in the Comoro Islands after the Effective Date.
V. Recordation of changes
Any recordal of changes – change of address; change of name; assignment; licensing; merger etc filed in the AIPO prior to the Effective Date of entry of the new country shall cover only the sixteen countries of the AIPO. This also applies to cases of application for recordal of changes filed after the Effective Date without necessary taking steps to apply for extension.
Nevertheless, the effect of the recordal of changes can be extended if an application for extension has been filed and granted.
The foregoing rule equally applies for changes recorded or pending recordation in the Comoro Islands filed before and after the date of accession to the AIPO.
VI. Dead line for extension
The dead line to apply for extension of rights over a registered trademark either from the AIPO to NEWMEM or from NEWMEM to the AIPO is Twenty (20) Months beginning from the Effective Date.
Therefore, applicants can file for extension in both ways before the 25th of January, 2015 dead line. But it’s advisable to file an extension request at the earliest to have earliest effective date of protection.
Any application filed after the statutory dead line will undoubtedly attract penalty for late filing.
For any further query, feel free to ask us.