Before you learn how to register a trademark in Benin, this is what you should know.
In Benin, trademarks are governed by the Bangui Agreement, dating back from 1977, which establishes trademark law for all its signatory countries; this means that Benin does not have its own trademark regulations and trademark protection is dictated by this agreement. This means that all trademarks in Benin are registered through the OAPI (in French, Organisation Africaine de la Propriété Intellectuelle; in English, African Intellectual Property Organization). Benin does have a local bureau in Cotonou, the Agence nationale de la propriété Industrielle (ANaPI), but it is only for citizens or residents of Benin, not foreign registrants, and does not process trademark applications but rather dispatches them to OAPI.
Since OAPI is a member of the Madrid system, by extension Benin is as well. Therefore, foreign trademark owners from Madrid system member country can chose to extend their trademark to OAPI via the World Intellectual Property Organization instead of filing an application with the OAPI.
Once a trademark is registered with the OAPI, its protection covers all of its member countries in addition to Benin: Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast (Côte d'Ivoire), Mali, Mauritania, Niger, Senegal and Togo.
Contrary to other systems such as ARIPO, with the OAPI trademark registration it is not possible to designate fewer member countries or exclude a country: the protection always extend to all current members.
Benin is a first-to-file jurisdiction. This means a trademark is only granted protection once it is registered. Only in the case of globally recognized trademarks can a brand be protected without registration.
In Benin marks for goods and service marks are considered separate; even if the same trademark will be used for both goods and services, two separate applications will have to be filed, one for the goods (Nice classes 1 through 34) and one for the services (Nice classes 35 thorugh 45).
When colors are to be claimed as a feature of the mark, additional charges will apply.
What are the requirements for trademark registration in Benin?
In order to file an application with the OAPI, a simply signed, original Power of Attorney must be forwarded to the local agent. The form will be provided. It is not necessary to have the Power of Attorney signed before a Notary.
The registration process with OAPI from the filing of the application to the issuing of the trademark certificate takes about 6 to 12 months.
Here is a general outline of the process for how to register a trademark in Benin:
During the examination process, the trademarks office only considers formal criteria when determining if a trademark is suitable for registration; it does not consider previous similar or identical trademarks. If the trademark complies with the formal requirements, then the certificate of registration will be issued.
After the registration has been granted, and the certificate issued, the registration will be published in the trademarks gazette and interested third-parties will have a period of 6 months in which they are able to file opposition actions against the trademark. If such actions are successfull, the registration will be cancelled.
As soon as the registration has been granted, OAPI will issue a paper trademark certificate. Since the opposition period takes place after the registration certificate has been issued, it must be noted that in case of opposition actions, a trademark for which a certificate has been issued can be rendered invalid.
All trademarks registered with the OAPI, and therefore in Benin, have an initial validity of 10 years from their date of registration, and can then be renewed for further periods of ten years. There is no limit to how many times a trademark could be registered. If a trademark is not renewed before its expiration date, it will still be possible to request the renewal during the 6 months following it, subject to the payment of increased renewal fees.
A trademark that is not used for more than five years after its registration date will be vulnerable in case a third party wishes to file cancellation actions against it. Using the trademark in one single country that is a signatory of the Bangui agreement is sufficient to prevent this vulnerability.