Madrid Trademark Application Strategies in Africa

The Madrid Protocol allows trademark owners to seek protection in up to 131 countries by filing a single international trademark application, thereby reducing the administrative burden of applying, changing and renewing trademarks separately in each member state.

However, the Madrid Agreement is a procedural system that provides only an optional path and does not contain substantive provisions regarding the conditions for obtaining protection, grounds for refusal, or the scope of rights in designated member states. WIPO only examines the formal requirements of international trademark applications; obtaining trademark rights still requires substantive examination under the laws of each designated country.

However, the Madrid Protocol may not be the best option for African countries. Of the 54 African countries and regions, only 24 countries and regional organizations have joined the Madrid Protocol. Therefore, when using the Madrid route to enter Africa, it is necessary to combine international registration with national or regional applications to ensure protection across the continent.

African countries fall into two categories: civil law countries, where international treaty obligations automatically take effect domestically, and common law countries, where international treaties must be introduced through parliamentary legislation. In some African countries, national IP offices actively process and examine applications, notifying WIPO of any objections within a strict timeframe of 12-18 months. National IP offices utilize a unified digital trademark register covering both national and international trademarks. However, in some countries, the effectiveness and efficiency of their systems are highly uncertain due to a lack of procedures, resources, training, or digitization required to implement the Protocol, or due to significant administrative backlogs.

The African countries that have currently joined the Madrid Protocol include:

• Algeria, Botswana, Cape Verde, Egypt, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Tunisia, Zambia, and Zimbabwe; and the African Intellectual Property Organization (OAPI)

African countries that have not yet acceded to the Madrid Protocol include:

• Angola, Ethiopia, Nigeria, South Africa, Tanzania and Uganda
• Ethiopia: On October 1, 2024, the Council of Ministers approved accession to the Madrid Protocol, but it is still awaiting parliamentary approval.
• South Africa: Approved to join in 2003, but was repeatedly postponed due to review deadlines and other reasons.

Countries where international registrations are fully effective

• The Madrid Protocol is most effective in seven countries: Algeria, Egypt, Madagascar, Morocco, Mozambique, Rwanda and Sudan. These countries have modernized their laws, digitized their systems and strictly adhered to WIPO deadlines.

In other member states, there may be legal gaps, unimplemented procedures, or administrative delays. For example, in Eswatini, Lesotho, Sierra Leone, and Zambia, Madrid registrations cannot be processed or enforced, leaving only national registrations. In Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Namibia, Sao Tome and Principe, Tunisia, and Zimbabwe, Madrid registrations may lead to examination delays and backlogs due to limited examination resources. Data shows that between 2020 and 2024, Botswana received 3,839 national designations and issued only 244 refusals, while Zimbabwe received 4,955 designations and issued only 29 refusals.

In countries like Botswana, Namibia, and Mozambique, WIPO-recorded goods/services restrictions are not synchronized with national registers, resulting in inconsistent information. Namibia has never issued a declaration of authorization, making it impossible to prove trademark rights. In countries like Namibia, notices of rejection have been significantly delayed from 30 days to 180 days. In countries like Mozambique, the non-extendable 30-day deadline can make it difficult for right holders to respond promptly due to delays. In Madagascar, trademark rejections can only be revoked through court revocation, which is costly, so a preliminary search is recommended.

According to Article 4(1)(a) of the Madrid Protocol, an international registration has the same effect as a national application. If no refusal is received within the prescribed period, it will be deemed to be granted. However, such authorization does not prevent a subsequent challenge under national law. Therefore, there is always a risk that an international registration will be revoked. Brand owners should review their international registration designations in Africa, especially those that are implicitly granted, and confirm with local lawyers the actual legal status of the trademark in the local country. If there is no remedy, the best way is to file a national or regional application, such as through OAPI, which currently covers 17 member states, mainly in West and Central Africa.