By Simbarashe Manyika, Registry Associate (Client Services), ARIPO
The Banjul Protocol on Marks is the principal legal instrument for the registration and administering of marks under the African Regional Intellectual Property Organisation (ARIPO). It provides the framework within which the registrations are done, and provides for the specific design and contents of the forms that will be used. The Banjul Protocol covers both trade and service marks. The forms provided in the Protocol have resulted in the standardisation of mark applications, processing, and administration of the same. In the field of records and information management, forms are vouched for as they bring about consistency and facilitate the capture of information in an organised way. The adoption and use of forms as provided for in the Protocol has also made it easy to effectively implement the e-service platform, which is based on forms management.
Thirty-three (33) forms currently comprise the list of forms under the Protocol. The forms as put across in the Protocol can be grouped into broad categories based on their “origin,” that is, Applicant (any natural person, legal entity), Secretariat (ARIPO), and Designated State (any of the Banjul Protocol contracting states) generated forms. Though generated from different origins, the forms retain the pre-set format and structure as provided in the Protocol. They can be broken down into subcategories based on each form’s function or purpose, and these are Application/request, Confirmatory/informative, transmittal and action forms.
Applicant Generated Forms
In any registration system, the applicant forms kick starts the process. The same applies to the mark registration system under the ARIPO regional system. The forms under this category are mainly used by the applicant and or his authorised representative as they request for action to be taken by either the designated state and or the ARIPO secretariat. From this point of view, they qualify as action forms also, the action being taken mostly by the ARIPO secretariat. The core of the forms making up this category include:
§ Form M1 – which is the request for registration form. It contains the bulk of the information concerning the request for registration of the mark. It should be completed with the utmost care, as correction of errors carries a levy. Mistakes will cause unnecessary extra costs to the applicant. Most common errors encountered on forms received includes the omission of representative details, designation of non-Banjul Protocol contracting states, omission of goods or services specification list, the inclusion of classes that are not in line with the prescribed NICE classification system, and non-submission of the application and designation fees on filing or within the 21-day prescribed period.
§ Form M3 – being request for subsequent designation. It allows applicants to make additional designations to an existing mark application or registration under the Banjul Protocol system. This occurs mainly where a new state becomes a party to the system. Usage of this form has surged of late and to ensure processing of such requests; applicants need to submit the request fee and all other prescribed fees on filing.
§ Form M2 – is the power of attorney and its submission is mandatory where a representative is filing the application. It is one of the forms with a prescribed time limit if not submitted on filing. The time limit is two months from the filing date, and the consequence of failing to submit will be refusal due to non-compliance with formality requirements unless a request for extension of time limits is lodged.
§ Form M19 – is the request for extension of time limits, used in cases whereby the applicant, for one reason or another, is not able to comply with requirements within the set time limit and comes with a prescribed fee.
§ M9C- request for the designated state to reconsider the decision that registration shall have no effect on its territory. The most common challenge is late submission of the request, as it should be done within two months from receipt of conditional refusal on Form M9.
§ M10 – request for renewal or registration of mark, is filed to renew the registration of the mark. The renewal request is done on each 10th anniversary of the application and should be accompanied by prescribed fees.
§ M11- request for correction of errors, changes, or alterations. This form allows applicants to amend details of the application as entered on the record. Alterations that may be made include change of applicant, representative, change of address and correction of errors, among others. The fees prescribed differ depending on the request.
These forms, when actioned, provide for the information that will make the official record of the mark application and its administration. It is thus imperative that applicants when using any of the forms in this category, provide complete and accurate information as well as complete all necessary sections of the forms as required. Applicants and or their representatives should always be conscious of the various sections of the forms and the specific information requirements therein. This will, in turn, help eliminate unnecessary delays that may arise due to incomplete forms or inaccurate information being provided. Other forms making up the list in this category of forms are Forms M4C, M7, M16 and M18.
Secretariat generated forms
Mandated to receive, process, and register marks, it is at the Secretariat where confirmatory/informative forms are generated. These forms are mostly by-products of the actions resulting from the processing of requests in the applicant form sub-category of forms. Forms in this category confirm the implementation of actions requested by applicants and they also act as notices from the secretariat to member states and applicants or their representatives. The most common within this category are:
§ M5B – the acknowledgment of filing receipt. This form most importantly provides the filing date, application number allocated to the mark application and confirms the designated states and classes.
§ Form M4 – notification of applicant to comply with formality requirements. It calls for the applicant to comply with the formality requirements that will be listed on the form. Upon receipt applicant or representative is expected to respond within two months, failure to which the application will be refused for non-compliance with formality requirements.
§ Form M4A – notification of refusal for non-compliance with the formality requirements issued after the applicant has failed to comply with formality requirements after the expiry of the two months period provided for. Applicants upon receipt may appeal through the Board of Appeal or alternatively pursue the application by requesting for conversion to a national application.
§ Form M8- this form qualifies as a transmittal form with which the ARIPO office, upon applicant satisfying all formality requirements of the documents comprising the application, sends to designated states documents comprising the applications and at the same time requests them to conduct substantive examination within nine months from date of its issuance.
Other forms making up this category are M19B – grant of extension of time limits, M11B and M11C being notices of abandonment or withdrawals, M14B, M15B being notices of recordal of assignments, licences, and transmissions, respectively.
It is of great importance that applicants or their authorised agents keep an eye on their portals and or their communications channels for any of these notices or confirmations to remain abreast with the changes and or developments that will be taking place in respect of their applications.
Designated State generated forms
Under this category, we have a wide array of forms cutting across the sub-categories from confirmatory/informative, transmittal, to action forms. The most common forms under designated state being:
- Form M9 is a conditional acceptance or refusal of application notice. It falls under the confirmatory/informative sub-category and fits in the action sub-category forms. This form may be issued within nine months from receipt of Form M8 by each designated state. Where it is issued with a condition, the applicant may respond within two months else the application is regarded as withdrawn.
§ Form M9B notice of acceptance by a designated state is the alternative to Form M9 and another key form in the informative category. The two forms M9 and M9B are both results of actions by a member state concerning the substantive examination of trademarks. Upon receiving Form M8 from the secretariat, the member states are expected to issues either form M9/M9B within nine months.
The most common shortcomings concerning these forms include non-issuance and issuance way after the prescribed nine months period. The protocol provides for registration of the marks if members do not issue any of these forms. However, this raises uncertainty to users on the enforceability of the registered mark. It is thus critically important that member states strive to always issue either of these notifications within prescribed time frames.
Wrapping up the forms in this category are less frequently used forms such as form M13, which is an informative/confirmatory form concerning registration of a licence or assignment, form M6, which is a transmittal form, Form M20B notification of the final decision on the opposition of a mark, etc.
In further understanding the various forms used under the Banjul Protocol on Marks, it is critically important to use the prescribed form when pursuing various actions correctly. Due care should always be taken to ensure that the information provided on the forms is accurate and clearly legible. In addition, time factor consideration should always be taken note of, as some of the forms carry a time limit that must be complied with. In cases where forms that carry a fee are submitted, the requisite fees should be paid. This is significantly important to avoid delays in processing and any inconveniences that might arise due to non-compliance with time limits and fees payment.
References:
Banjul Protocol on Marks, (2019). ARIPO Office, Harare.
ARIPO trademark forms, [Online], Available, www.aripo.org