Zimbabwe – Newest Member Of The Madrid Protocol

On 11 March 2015, Zimbabwe will become a member of the Madrid Protocol - an international filing system which allows trade mark applicants to designate various member countries in one international trade mark application. The system is cost effective and eliminates vast amounts of paperwork required to file trade mark applications in individual countries of interest, which has made it a popular choice for many trade mark owners.

Zimbabwe will be the 94th member of the Madrid system. OAPI (the African Intellectual Property Organisation) also joins the Madrid Protocol on 5 March 2015. Zimbabwe and OAPI are amongst a few other African countries that are members of the Madrid Protocol - these include Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Sudan, Swaziland, Tunisia and Zambia.

The addition of Zimbabwe as a member state of the Madrid Protocol will therefore provide trade mark applicants with the option of designating Zimbabwe in an international application, together with other member countries of interest.

Local trade mark applications in Zimbabwe can be fairly expensive. Previously, brand holders sometimes filed their trade mark applications in Zimbabwe via the ARIPO system in order to save costs1. The Madrid system should now provide another, cost effective alternative to local trade mark filings.

The concern, however, is that an international registration designating Zimbabwe may not yet be enforceable in Zimbabwe, given that its national laws have not been amended to give effect to the Madrid system and it is unlikely that such an amendment will take place before 11 March 2015, when Zimbabwe will be joining the Madrid Protocol. Until then, an international registration designating Zimbabwe will probably not be enforceable. Therefore, it is not advisable for brand holders to use the international system until such time that the national...