Mauritius: Opposing An Infringing Trade Mark At The OAPI

Under the current version of the Bangui Agreement relating to the creation of the African Intellectual Property Organization (in French abbreviated as OAPI for Organisation Africaine de la Propriété Intellectuelle), a trade mark is first registered and only thereafter published for opposition. This means that third parties are only made aware of the existence of a trade mark once it has been registered by the OAPI administration and published for opposition.

If a third party wants to contest the validity of an OAPI trade mark registration, this can be done by filing an opposition against the trade mark registration within the prescribed time. The opposition procedure is handled in the first instance by the Director General of the OAPI and takes approximately 18 months. In case the decision of the Director General is appealed, the Higher Appeal Commission of OAPI makes a final determination of the matter. This takes at least another 18 months.

This lengthy post-registration opposition procedure is sometimes abused by infringers and bad faith applicants, who in the meantime rely on their trade mark registration to resist an infringement action and to continue to sell products under a trade mark registration which infringes a third party right. There are also cases where trade marks which have been cancelled by the Higher Appeal Commission of OAPI as a result of an opposition procedure have been re-filed.

The OAPI has announced that it will in the future allow the registration of trade marks only at the uneventful expiry of the opposition period. Further, the OAPI announced substantive examination on relative grounds (prior rights) where infringing trade marks which have been rejected by the Director General or the Higher Appeal Commission of the OAPI further to an opposition procedure are automatically refused in case they are being submitted for a new registration in the same class.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.