This is an article on how Designs are being registered under the African Intellectual Property Organisation(better known by its French acronym OAPI) which clearly infringes on the famous trademarks

1. USING DESIGNS TO INFRINGE
TRADEMARKS:THE CASE OF OAPI.

2. Introduction
• The African Intellectual Property Association better
known by its French acronym OAPI(Organisation
African de la Propriėtė Intellectuelle) is a regional
organization that handles intellectual property issues
of 17 African states(mostly French speaking states with
Cameroon being the only country that speaks English)
namely, Benin, Burkina Faso, Cameroon, Central
African Republic, Chad, Comoros, Congo, Cote D’Ivoire,
Gabon, Guinea Conakry, Guinea Bissau, Equatorial
Guinea, Mali, Mauritania, Niger, Senegal and Togo.
• The organization acts as a regional office with its
headquarters in Yaounde, Cameroon.

3. • This paper will be looking at the ways in which Designs
are being registered that clearly infringes registered
and well known trademarks.
• We will look at what a trademark is under OAPI Bangui
Accord of 1999, what a Design is under the same law
and the loophole that allows designs to be registered
even when they have certain elements that does not
warrant them to be registered as designs. The paper
will also show how famous trademarks are used in
Designs to make them look more aesthetic and more
appealing to consumers

4. Trademarks under OAPI
• Article 2 of Annex III of OAPI Bangui Accord of 1999 defines
a trademark as any visible signed used or capable of
distinguishing the goods or services of any enterprise shall
be considered a trademark or service mark including in
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 of arrangements of colours, drawings, reliefs,
letters, numbers, devices and pseudonyms.
• An important element of that definition is the requirement
for a trademark to act as an indication of the origin of the
goods or service, that is, distinguishing the goods and
services of one enterprise from those of another.

5. • For a trademark to be eligible for registration, it must not
be identical to a mark that belongs to another, or a prior
registered mark and it must not be contrary to public policy
and morality.
• It must also not be misleading as to the geographical origin
of the product.
• It must not be a mere reproduction of state emblems,
armorial bearings or the abbreviated name or acronym or
an official sign or hall mark indicating control an warranty
of a state.
• To serve the purpose of trademarks, the mark must be able
to identity itself with a particular source of origin such that
consumers will attribute the mark to its owner

6. Designs under OAPI
• A design is the appearance of a product resulting from the features of, in
particular, the lines, contours, colours, shape, texture and/or materials
and/or materials of the product itself and/or its ornamentation.
• Under OAPI law, Article 1 of Annex IV of the Bangui Accord 1999, any
combination of lines or colours shall be considered a design and any three-
dimensional shape, whether or not associated with lines or colours, shall
be considered a model, provided that the said arrangement gives a special
appearance to an industrial or craft product and may serve as a pattern for
the manufacture of such a product.
• In a nutshell, the principal element of Design is its aesthetic element
which makes it more appealing to the consumer. It is the design of
products which in most cases determine its commercial success.
• Thus companies are investing much money to make sure its products are
successful in the market. There are generally two different types of design
protection, unregistered and registered design.
• A design application can include up to 100 designs.

7. • When an application for Design is filed, it is examined
to determine if it meets the requirement of a design.
Under OAPI law design shall be new, novel and not
disclosed anywhere in the world before the filing date
of the application.
• There is major problem with this article and it is the
bone of contention in this article. The law does not
have the requirement that designs can be rejected if
they incorporate an element of a trademark as in
European Design practice which stipulates Designs
shall be declared invalid if it encompasses another
trademark or distinctive sign

8. • It follows that a design must be new and most have individual character.
Individual character is similar to the distinctiveness requirement under
trademark law.
• That means a design must be capable of distinguishing itself from other
designs in the market and whether the informed user can make that
distinction. In determining the question of individual character the
informed user must be someone who has relevant knowledge of the
goods concerned.
• There is no definition of informed user and in some cases children as
young as between the ages of 5 to 10 years have considered to be
informed user.
• In determining whether or not the design has individual character, the
degree of freedom of the designer to develop the product has to be taken
into consideration so when a design application is filed, the design has to
be compared with all available designs in the market and those that are
available worldwide so as to determine whether the design creates a
different overall impression from all prior designs.

9. • Under OAPI law , there is no specific rule on examination of Designs
except Article 12 of the General provisions of the Bangui Accord
1999 which states that, the organization of shall undertake the
examination, registration and maintenance and the publications of
the industrial designs according to the rules provided for in this
agreement.
• Practically, there is only examination as to form and not substance
which means the critical elements of design such as it being novel
and having individual character are not examined. Also designs are
hardly rejected on relative grounds.
• It shows that Designs shall be examined but that is not always the
case as Designs encompassing well known trademarks have been
registered in OAPI. But since there is no statutory obligation for the
examiner to examine designs so as to determine whether it
encompasses famous trademarks, it is therefore left for design and
trademark rights owners to keep a watch on possible infringements.

10. Design Registrations infringe
Trademarks
• The above figure is the figure of a design published in the OAPI Official
Bulletin of 20th December 2016. The designs were filed by an Ivorian
Company with no connection to Adidas. The product is made of
rubber(plastic) and it is of a very low quality which damages the
reputation of Adidas. The examiner has the responsibility examining
design applications as to whether it encompasses elements of a well-
known trademark. That means there is no substantive examination of
designs and only examination as to form.

11. • The photo above is a design applied for by a
company in Cote D’Ivoire that produces plastic
shoes and the application was filed under
international class 2 of the Locarno
classification. The design has the Nike swoosh
trademark which is a well-known trademark.

12. • Figure three above an application filed by the
same company in Cote D’Ivoire. The company
is does not seem to have any connection to
Puma though it has the Puma logo engraved
in the design.

13. • Figure four is an application filed by an individual
Mr Djibril Sow in Conakry, Guinea. The design is a
replica of the Adidas Messi football boots and has
the three strips logo of Adidas. The Adidas Messi
football boots is a well known design among
football players and fans.

14. • Figure five is an application filed by K-J Plast, B.P 121,
Abidjan, Cote D’Ivoire and encompasses the famous
trademark FILA which is owned by Fila Korea.
• Figure six is an application also filed by K-J Plast and it’s the
replica of a popular Adidas football boots. The design also
has the famous Adidas three stripes mark engraved in it.

15. • From the above publications, it shows that, the examiner does not examine
designs as to substance since he does not have any statutory obligation to do so. It
is therefore left for the owners of distinctive signs to monitor design publications
but even if they do, there is no provision for opposing the registration of designs
under OAPI law.
• Owners of distinctive signs can only use trademark infringement as the only option
because under OAPI law, the owner of a trademark cannot oppose the registration
of design based on an earlier distinctive mark. Therefore, the owners of distinctive
signs can only wait when the goods are in the market and then file an infringement
and an injunction to stop the production of the goods.
• The owners of the design may have a defense that the design and all its aesthetic
elements are registered. However, under OAPI law, an interested party may apply
to a court of competent jurisdiction to challenge the rights or validity of titles and
such decisions shall be binding on all other member states. So trademark owners
can bring a criminal action or a civil suit against the owner of designs that infringes
on their own rights.

16. Recommendation
• The use of Designs to infringe trademarks is a major problem in the
OAPI region as the examiners do not reject designs during
examination on relative grounds. There is the need for OAPI to
amend its Design practice and internal regulations to protect
owners of trademarks and other distinctive signs that have acquired
a good reputation in the market.
• The legislator should include or amend to current design law to
include a provision which states that designs shall be refused if the
Design applied for encompasses a registered trademark or a
distinctive sign. Use of a prior distinctive sign on a design to make it
more aesthetic is a ground for outright rejection under European
Union design practice. Most countries also have similar articles that
prohibit the registration of Designs that encompasses elements of a
distinctive sign or if a distinctive sign is used in the design e.g Article
25(1)(e) of The European Union Council Regulation (EC) No 6/2002
of 12/12/2002 on Community Design.

17. • For enquiries, contact Nganje Isaac through
isaacnganje@forchaklaws.com