The World Intellectual Property Organization recently announced that the Republic of Malawi has signed and ratified the Madrid Agreement and Madrid Protocol, making it the newest member of the Madrid System of registration of trade marks.
The Madrid Agreement came into force in 1892, focusing on international registration of trade marks. Over 100 years later, on 1 April 1996, the Madrid Protocol was introduced. The Madrid System accords a trade mark owner protection in all its 118 Member States. All trade mark owners who trade in or promote their goods or services in the European Union, the United States of America, certain countries in South America and Asia (both physically and through online media) are offered a one stop shop for the protection of their trade mark rights. The global protection offered by the Madrid System is an important aspect of trade mark protection for brand owners who use their brands internationally.
Kenya became a party to both the Madrid Agreement and Madrid Protocol on 26 June 1998. Even though the Madrid System offers convenience in trade mark protection, few Kenyan businesses have fully utilised the Madrid System. Trade mark owners in East Africa (Kenya, Sudan and Rwanda) wishing to register their mark internationally must submit a basic trade mark application or registration through the national intellectual property office of its country. To be eligible to make this application, the trade mark owner must either have a business, be domiciled or be a “national” of a Member State (as defined by that State). The process is relatively easy as the owner must only complete one application form which is provided in English, French or Spanish (the official languages of the Madrid Agreement). A variable application fee must be submitted in Swiss Francs with the fee calculator here.
Due to Malawi’s accession to the Madrid Protocol, Africa’s current membership in the Madrid Union (parties that have ratified both the Madrid Agreement and Madrid Protocol) stands at 21 countries out of the 118. The Madrid Protocol will come into force on 25 December 2018 in Malawi. After that date, local Malawian brands will be able to protect their marks internationally as well as affording foreign brands similar protection within Malawi. This is a fantastic development for Kenyan companies who wish to sell their products in Malawi as they will now have an option to seek protection of their trade marks through direct national filing or under the Madrid System.
For further assistance, please contact John Syekei, Head of our Intellectual Property practice, or your relationship partner at Bowmans Kenya.
