In Industrial Property Law, for a brand owner to be able to claim ownership on it’s mark, it must be validly registered, and when registered it is valid only for ten years from the filing date of the application for registration, however the ownership of a mark may be preserved indefinitely through successive renewals of the registration, which may be effected after every ten years.
The Bangui Accord which is the main text governing Industrial Property Law in the African Intellectual Property Organization region (“Organisation Africaine de la Propriété Intellectuelle”: O.A.P.I.) in its Annex 3 Article 2, states that ‘no person may claim exclusive ownership of a mark by performing the acts specified in the provisions of this Annex unless he has filed it for registration’
When the trademark is validly registered, the owner has exclusive rights over this mark, and in a situation where his rights over his mark are infringed, he can bring up an action which shall be admissible.
But if after a trade mark has been validly registered by its owner for a particular region, yet this same trade mark is validly registered by a person who at the time of filing did not know another person had a prior right to use the said mark and if the latter does not bring up an action within three years, his mark shall have to co-exist with that which is newly registered, as at this point there is a presumption of foreclosure by tolerance. This takes us to Article 46 (3) of Annex 3 of the Bangui Accord which states ‘any action for infringement of a subsequently registered mark whose use has been tolerated for three years shall be inadmissible except where it has been filed for registration in bad faith. However, the inadmissibility of the action shall be confined to those goods and services for which the use was tolerated” .this section of the Law establishes the principle of foreclosure by tolerance.
Foreclosure is defined here as “the forfeiture of a right or to be explicit the loss of a right after the expiry date to bring up an action”.
Tolerance here could be defined as “the presumption to accept the co-existence and usage of a similar trade mark for about three years without bringing up an action”.
From these definitions we can conclude that if the owner of a trade mark willingly accepts the existence of a newly registered and used mark which is same as his, and if within 3years, he does not bring up an action then he is presumed to have accepted the existed of this trademark and if he brings up an action, it shall not be admissible.
But there are situations whereby after 3years of co-existence you can bring up an action and is shall be admissible if your trademark has been infringed;
These are;
Where the original owner was not aware of the existence of the newly used trade-mark,
Where the second registration was done in bad faith,
Where registration was done for the same class of goods and services, and the class of goods and services were not enumerated during filing,
Under these situations the original owner may bring up an action which may be admissible.
This principle of foreclosure by tolerance poses serious problems especially to multi-national companies that to a larger extent depend on their brand name for survival.
Some of these problems are;
Most of these companies do not have offices in the O.A.P.I. region which makes it difficult for them to actually know when another person is making use of their trademarks.
Usually these companies after they’ve registered their trade mark and starts making use of this mark in the market they either move away, the products are handled by less qualified individuals who may not be aware of competitors.
Also these companies do not know the risk involved in registering a trade mark without follow-up,
Again some of these companies are not well sensitized on the value of a trade mark, how u can maintain and lose it, how you can bring up an action within the possible datelines;
Some suggested solutions could be taken into consideration
For trademark owner or multi-national companies, they should set up offices within the O.A.P.I. region to manage their administrative affairs.
Also trade mark owners or multi-nationals should see it as an obligation to use qualifies Intellectual Property agents to manage their affairs within a given territory.
Also trade mark owners should carry out a search at the Intellectual Property organization office found in Yaoundé Cameroon twice a year to make sure their rights have not been infringed.
Consequences.
Loss of trade-mark.
Fall in economy.
Reduce employment
Recommendations
Qualified I.P. agents and specialist
African Intellectual Property Organization
