International Intellectual Property Firm - Filing Trademarks at OAPI - Attorneys For Patent, Trademark and Copyright Law

Intellectual Property is a term which denotes specific legal rights which authors, inventors and other intellectual property title holders may hold and exercise with respect to their creation(s) or invention(s). Intellectual Property seeks to confer a bundle of exclusive rights in relation to the particular form or manner in which ideas are expressed and not in relation to the ideas themselves. It is therefore a product of human ingenuity and fruits of personal creativity and inventiveness that have commercial value.

Intellectual Property (IP) generally is sub-divided into two main branches: Industrial Property and Copyright & related rights and other sui generis forms of IP Protection.

At OAPI, both service and product marks are protected. This is the commonest and main industrial property right granted to applicants.

What is considered a Trademark (product and service) at OAPI is any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise. These include particular surnames by themselves or in a distinctive form, special arbitrary or fanciful designations, the characteristic form of a product or its packaging labels, wrappers, emblems, prints, stamps, seals, vignettes, borders, combinations or arrangements of colours, drawings, relief, letters, numbers, devices and pseudonyms.

* Signs not protected as mark with OAPI: Olfactory signs (smells) e.g. perfumes; Audible signs (sounds) e.g. cry of an animal, etc.

* Signs which may not be validly registered.
- Marks which are not distinctive in character.
- Marks which are identical and confusingly similar to that of another person.
- Signs contrary to public order, morality or the Law.
- Signs liable to deceive the public or commercial circles in particular on the geographical origin, the nature or characteristics of the product or service considered.
- A sign which reproduces, imitates or contains among its element coat of arms, flag, other emblems, abbreviations or acronyms or an official control and guarantee sign or stamp of a State or an inter-governmental organisation set up by an international convention, unless by authorisation of the competent authority of the State or Organisation.

* Filing of Application.
The application must be addressed to the Director General of the Organisation in sufficient copies.
The document should show proof of the payment to the Organisation of the filing fees.
An unstamped Power of Attorney, if the applicant is represented by an agent.
A print of the mark including a list of goods or services to which it applies and corresponding classes of the international classification of goods and services (Nice Arrangement), the number of models of the mark to be supplied shall be specified by the implementation regulations of the law.
If it is a collective mark, the approval of the competent authority must be produced.

The Organisation shall admit as the date of filing the date of receipt of the application for registration made on the prescribed form at the Ministry responsible for Industrial Property or at the Organisation, provided that at the time of receipt the application contains:
- Indications concerning name, address, according to ordinary requirements, the nationality and the domicile of the applicant.
- The signature; if it is a corporate body, the identity and position (capacity) of the signatory must be indicated.
- The goods or services to which the mark in question applies.
- Proof of payment of the filing fee.
- In case of appointment of an agent, the applicant must make declaration thereof and indicate his name and address.

Registration of a mark shall only have effect for a period of ten (10) years from the date of filing of the application for registration. However, the owner of the mark may preserve same indefinitely through successive renewals every 10 years, subject to the payment of renewal fees.

* Cost of Trademark Protection.
Official charges for filing.
Agent fees (charges for services rendered).
Renewal charges or maintenance fees.
Cost for conducting a Trademark search.

* Scope of Registration.
A Trademark may be registered in one or several classes of goods or services under the terms of the Nice Agreement on the international classification of goods and services for the purpose of registration of marks.

* Procedure Observed at the Trademark Office.
- Formal examination.
- Substantive examination.
- Publication and opposition.
- Registration.
- Renewal.

Collective marks may also be registered. These are marks where the conditions for their use are laid down in rules approved by the competent authority and where they may be used only by enterprises of public character, unions or groups of unions, associations, groups of producers, manufacturers, craftsmen or tradesmen, provided that the latter are officially recognized and have legal personality.

The Registration of a Trademark confers on the owner the exclusive right to use the mark, or a sign resembling it, in connection with the goods or services for which it has been registered and similar goods or services. Registration also confers on the owner the exclusive right to prevent all third parties from making use in his business without his consent, of identical or similar signs for goods or services that are themselves similar to those for cause of confusion.

Our Firm specializes in examining the signs to make sure they are distinctive and not deceptive, after which we do the administrative preparation and filings on behalf of our numerous clients.

The duration of the protection is ten (10) years and renewal is as many times as the owner of the mark wishes.

The requirements for filing Trademarks at OAPI are as follows:
- Name and full address of the owner;
- Specification of goods/services;
- 10 prints of the mark (if a single word mark, ignore this);
- Classes of goods/services. (In OAPI, produce marks and service marks are subjects of distinct applications.);
- Priority claim (if any);
- Assignment of priority right (if any);
- Priority documents (if any);
- Power of Attorney (notarisation not required). Note that the Power of Attorney must be specific and distinct. This means that one Power of Attorney cannot be used for more than one application. It must mention the particular mark to be filed;
- The payment of OAPI charges and our Agency fees.

The issuance of the Certificate of Registration follows about six months or a year later, all things being equal. This, however, depends on the volume of work at OAPI. This Certificate is issued to us as Agents and we transmit same to clients by courier.

Note that the protection of the Trademark at OAPI takes effect from the date of filing.

Upon the filing of an application at OAPI, we send to the client by email a provisional proof of filing, which is the scanned copy of the filing request deposited at OAPI with the OAPI official stamp on it. This is to confirm to the client that the application is filed, while waiting for the original Proof of filing and Registration Certificate, which are also sent to the client by email. Once we are in possession of the Registration Certificate, to forward same to client together with the original proof of filing by courier.

A Patent is an exclusive right granted for the protection of an invention. The patent provides its owner with the exclusive right to prevent others from commercially exploiting the invention for a limited period of time in return for disclosing the invention to the public.

The conditions of novelty, inventive step and industrial applicability must be met before a patent is granted.

We carry out thorough examinations and searches on inventions to ensure that they do not lack the above-cited qualities.

The rights conferred on the owner or applicant is the exclusive right to work the patented invention, to prohibit any person from working the patented invention and benefiting therefrom. The owner obviously has the right to assign the patent, transfer it by succession and enter into license contracts.

The duration of the protection is twenty years upon payment of annuities from the 2nd to the 20th year of protection.

We require the following from our clients and applicants to process and file their patent applications:
- The name and full address of the applicant;
- The name and full address of the investors;
- The title of the invention;
- A detailed description of the object of the invention (3 copies);
- Formal drawings of the invention in A4 size (3 copies);
- A descriptive abstract of the object of invention (3 copies);
- Priority claim and priority documents (if applicable);
- Power of Attorney (not notarised) from the applicant to us;
- Where the inventors are different from the applicants, and a priority is claimed, a notarised written authorisation is requested from the inventor(s) to the applicant(s) permitting the latter to avail herself of the said priority (document de cession de priorité). This can be provided latest three months after the filing at OAPI;
- The payment of OAPI charges and our Agency fees.

NB: Any modifications on the invention can at any time be registered and a Certificate of Addition obtained.

* What happens if I do not patent my innovative products or process?
- Somebody else may patent it.
- Competitors will take advantage of your invention.
- The possibilities of licensing, selling or transferring technology will be severely hampered.

* Procedure observed by OAPI prior to granting a Patent.
- Formal examination.
- Substantive examination.
- Grant and publication.

* What are the charges associated to Patent Protection?
- Cost relating to the application fees and other official charges.
- Cost relating to the services rendered by the Patent Attorney or agent who assists in filing for Patent protection.
- The costs of translation especially if the Patent is in a language other than English or French.
- Annual maintenance fees.

3. COMMERCIAL NAMES.

A Trade name is a distinctive sign used in commerce to differentiate between one establishment and another. Trade name means the name under which a commercial, industrial, handicraft or agricultural establishment is known and operated.

Name or designation which by its nature or use to which it may be put is contrary to public order and morality and which in particular could mislead commercial circles or the public as to the nature of the commercial, industrial, handicraft or agricultural establishment designated by such name shall not be considered a Trade name.

The application for the registration of a Trade Name must be made on the prescribed form TN 501 which must mention obligatorily:

The duration of a Trade Name is 10 years from the date of filing an application for registration. However, the Trade Name can be conserved without limitation or duration by successive renewal after every 10 years upon payment of the renewal charges. Where a Trade Name is not renewed by its due renewal date as a result of circumstances independent of the will of the title holder, it can be a subject of restoration within a period of two years which start running from the date the renewal was due.

Designs are any arrangement of lines or colours. Models are any three dimensional shaped objects whether or not associated with colours or lines, provided the said arrangement or shape gives a special appearance to an industrial or craft product and may serve as a pattern for the manufacture of such a product.

Any creator of an industrial design and his successors in title shall have the exclusive right to exploit the said design and to sell or cause to be sold for industrial or commercial purposes the goods in which the design is incorporated.

The following requirements are needed for the application for industrial design:
- Name and full address of applicant;
- Name and full address of the author of the design or model;
- Precise designation of the product to which the design is destined to be incorporated;
- The classes of the products;
- The date, number and country of previous application, if any;
- Priority claim, if any;
- Three identical copies of a print of the design or model;
- Priority documents, if any;
- Power of Attorney;
- The payment of OAPI charges and our Agency fees.

These are implements of work or objects to be utilised or parts of such implements or objects in so far as they are useful for the work or employment for which they are intended on account of a new configuration, a new arrangement or a new competent device, and are industrially applicable.

We require the following for the application at OAPI:
- A detailed description of the invention;
- The claims;
- The drawings, if any;
- The abstract of the invention;
- The priority documents, if any;
- The assignment of priority documents, if any;
- A Power of Attorney;
- The payment of OAPI charges and our Agency fees.

We effect searches on all aspects of industrial property rights protected in OAPI.

- For Trademarks, verbal and figurative similarity searches are conducted against anterior marks.
- For Patents, we conduct searches to ascertain their prior existence.

As already mentioned, trademarks are protected for a period of ten (10) years, renewable as many times as possible. Thus we keep a track record of Trademark registrations and do notify our clients at least a year to the renewal dates. Upon their confirmation, we then go ahead to renew the said marks in their last year of protection to ward off penalties or risk of losing such rights.

With regard to annuity payments, we monitor and pay annuities for Patents and Utility models on behalf of applicants and owners who assign us.

The main requirement for renewal is a copy of the Registration Certificate of the said Trademark on which all the vital information is inscribed.

With regard to annuity payments, just the proof of payment is required accompanied by a forwarding correspondence.

A Trademark as the identity of a business establishment must be well protected. Even though this is done, there still arise trademark infringements necessitating claims for damages by the aggrieved party. These damages must be reflective of the popularity of the mark.

Thus as experts, we evaluate the popularity of a given mark in the OAPI region. We also audit the impact caused to owners of infringed brands especially when seizures are effected.

We represent clients to enforce their rights on Trademarks and Patents before OAPI and the judicial courts. This is common with cases of unfair competition. Before the local courts we initiate confiscation proceedings, obtain injunction orders and organise raids.

Domain names are the identities of web sites, i.e. the names used to identify web sites.

In Cameroon, the Country Code Top Level Domain is the “.cm”. Any person resident in Cameroon or abroad can apply for a “.cm” domain name upon proving ownership or licence to use the name.

The registrations in Cameroon are done at the Cameroon Telecommunications Company (CAMTEL) against paying the requested fees and annual recurrent charges.

We effect recordals on any Industrial Property rights affecting ownership, benefit of rights or change of location of the owners and applicants of the said right.

Common recordals include Change of name of owners, addresses, security recordals and assignments. Justifying documents are always requested or proof of any recordal. These proofs must be notarised to uphold their authentic value.

In the OAPI region, litigation on infringement of rights usually commences with opposition.

An opposition is a petition lodged at OAPI requesting that another industrial property right which infringes on yours should be annulled. Thus a trademark registration which is likely to be associated to yours can be opposed.

We prepare the opposition proceedings and seize the competent Commission at OAPI for withdrawal of the right conferred, upon payment of the necessary OAPI charges and our Agency fee and honorarium.

With regard to restoration, when owners of industrial property rights lose those rights at OAPI due to either failure to pay certain taxes (annuities), provision of certain documents, etc. we represent them in applying for and justifying the need of the restoration of the said rights within the prescribed time limits.

NB: Contact us for all your IP Matters within the OAPI Jurisdiction and for all queries/information regarding OAPI official charges and our Agency Fees.