It’s said: “A right has no value that only in case there exist remedy to exercise it”. “Ubi jus ibi remedium” is a latin maxim which means “where there is a right there is a remedy”. (Civil remedies for copyright infringement, Laurent Carrière, Lawyer for Robic Law firm)
Most countries organize remedies, both administrative and jurisdictional, in their legal arsenal relating to industrial property.
In African Intellectual Property Organization (OAPI) area which is a sub-regional institution including 17 member countries and signatories to the Bangui Agreement. The article 19 of the Bangui Agreement provides: “the decisions on rejection or opposition cases provided by article 33 paragraph 2 below taken by the Organization are subject to remedy in front of High Commission of Appeal sitting with the said Organization.”
As a reminder, under the terms of this article 33 paragraph 2, the High Commission of Appeal is responsible for ruling on consecutive remedies:
a) the rejection of applications for a title of protection concerning industrial property;
b) the rejection of applications to maintain or extend the term of protection;
c) the rejection of restoration applications;
d) the decisions concerning oppositions.
In the Democratic Republic of the Congo, the framework Law No. 82-001 of January 07, 1982 governing industrial property, does not clearly organize the remedy procedure against the decisions of the Minister having industrial property in his attributions.
However, in France, the first paragraph of article L. 615-17 of the Intellectual Property Code provides: “All litigation arising from this title is assigned to the Courts of First Instance and the Courts of Appeal to which they are attached, exception of remedies formulate against decrees, orders and other administrative decisions of the Minister responsible for industrial property, which fall under administrative jurisdiction”. (Article written by Michel Vivant, “Arbitration and Intellectual Property”, 2004)
Thus, it is relevant for the interest of our study to carry on a first exam on administrative remedy (I) and secondly to finalize with the jurisdictional remedy (II).
1. Administrative remedy
In industrial property law field, when a justiciable considers himself offended by a decision of the competent administrative authority, for instance, in refusal case related to application registration of the patent for invention, brand certificate, model or industrial design, this justiciable has the possibility to introduce his remedy to the same authority that made the decision: this is graceful administrative remedy, because the applicant will request to the authority to report or modify his act or decision which goes against the law.
The administrative authority might or not revert to his decision.
In the assumption that he does not revert to his decision, the remedy will then be introduced to the authority immediately superior to that which made the act; this is the hierarchical remedy. Here, the hierarchical authority can, on the remedy of applicant, ascertain the illegality of the act of his subordinate and cancel it, if necessary.
In all cases, any remedy introduced out of the legal deadline incurs foreclosure.
It should be noted, moreover, that the silence of the administration to respond for a period of time may conduct to implicit rejection of the request, (Administrative Law, Volume I, Clément KABANGE NTABALA, University of Kinshasa, 1997).
Furthermore, it should be noted that administrative disputes in the field of industrial property law are different according to the legislation from one State to another.
I.I. The position of the States signatory to the Bangui Agreement
In the OAPI area, as we had previously indicated, it exists an appeal body sui generis (Latin maxim, meaning literally, “of its own kind”) called the “High Commission of Appeal”, which draws it basis from both, the Bangui Agreement (Art.19) and the regulations relating to the organization and functioning of the High Commission of Appeal.
It is composed of three members chosen by random draw from on representatives list designated by the member States, on the basis of one representative per State.
Indeed, it is the OAPI Board of Directors, which chooses three holder magistrates and three substitutes having at least ten years of experience and possessing a good knowledge in industrial property matters. They have a mandate of two years’ renewable only once. (Litigation course in the OAPI area given by Mr Maurice BATANGA)
The Commission is competent to know about:
- Remedy brought against decisions rejecting industrial property title applications: patents, utility models, brand (article 15 of Annex III relating to the brand), model and industrial design, trade names (article 8 of Annex V relating to the trade names), geographical indications, plant varieties (Article 21 of Annex X relating to the plant variety);
The question that can be asked is why Annexes I, II, IV, VI have remained mute with regard to remedies against decisions rejecting patent applications respectively, utility models, industrial designs, geographical indications, while the other Annexes are more explicit? Is this not a legislative gap? Indeed, this is a legislative gap, because in practice the remedies are exercised for all these titles.
- Remedy against decisions on oppositions (Article 18 paragraph 4 of Annex III, Article 9 paragraph 4 of Annex V, Article 12 paragraph 4 of Annex VI, Article 17 paragraph 5 of Annex X, Article 26 of Annex X);
- Decisions to reject restoration requests (article 41 paragraph 8 of Annex I, article 36 paragraph 6 of Annex II, article 25 paragraph 6 of Annex III, article 13 of Annex IV, article 12 of Annex V, article 35 of Annex X;
- Decisions rejecting requests for inclusion in special registers (the Bangui Agreement is not explicit on this subject);
- Decision brought against decisions to strike out agents (Unless we are mistaken, we had not found in the Bangui Agreement, a single article which expressly mentions the industrial property agent.
It should be point out that, under penalty of foreclosure, the remedy must be brought following this deadline:
– 60 days in case of rejection of application for patent title, utility models, brand (Article 15 of Annex III), model and industrial design, trade names (Article 8 paragraph 7 point 2 of Annex V), geographical indication, plant variety (article 21 of Appendix X; in this matter, the legislator omitted to mention the deadline for introducing an appeal to the Commission.);
– 30 days for rejection of restoration application (article 41 paragraph 8 of Annex I, article 36 paragraph 6 of Annex II, article 25 paragraph 6 of Annex III, article 13 of Annex IV, article 12 of Annex V, article 35 of Annex X;
– 90 days in case of decision on opposition (Article 18 paragraph 4 of Annex III, Article 9 paragraph 4 of Annex V, Article 12 paragraph 4 of Annex VI, Article 17 paragraph 5 of Annex X, Article 26 of Annex X), and this on the date on which the applicant became aware of the act or decision he is contesting. After this deadline, any administrative appeal becomes inadmissible.
It is important, to define the criteria enabling to make the difference between the action in opposition and the claim of property.
If a brand is fraudulently deposited for the rights of a third party having priority in the use of this brand, this third party can claim ownership of it from OAPI. Provided that the user makes a deposit of the application registration within six months of the publication of registration related to first deposit. (Article 5 paragraph 3 of Annex III).
On the other hand, any interested party may oppose the registration of a brand, a design, a trade name or even a plant variety which does not comply with the substantive conditions of title validity. If the opposition is based on violation of anterior registered right, alone the holder of this right can trigger the opposition procedure. The opposition deadline is form six months from the publication of registration. (Article 18 point 4 of Annex III, Article 9 paragraph 4 of Annex V, Article 12 paragraph 4 of Annex VI, Article 17 paragraph 5 of Annex X, Article 26 of Annex X).
Mr. LOBO, is a professional Cameroonian trader, produces and markets drinking water under the brand “Ô “with circumflex accent” in all countries of the OAPI area.
What will he do to protect his brand?
Basically, he must apply for his brand registration application directly to the OAPI. If the Director General of OAPI rejects it, Mr. Lobo will introduce his remedy to the High Appeal of Commission. In this case, the secretariat of the Commission will communicate the remedy to the Director General to give him the opportunity to revert to his decision, and this within one month (graceful administrative remedy). However, if the Director does not revert to his decision, the remedy will be communicated to the President of the Commission and other members of the Commission (hierarchical Remedy).
The Commission seized by the request of Mr. LOBO may confirm the decision of the Organization or cancel it. In case of cancellation of the Organization’s rejection decision, the brand will be registered.
Once he has the title of ownership of brand and his products to be marketed, Mr. LOBO will have to ensure the payment of renewal tax related to his brand, and this, every ten years from the deposit of the request.
In the event that Mr. LOBO does not pay his renewal tax, his brand will be lost. He must draft a restoration request to the Organization. This Organization can, through its Director, restore the brand or reject the restoration request. In case of rejection, Mr. LOBO must therefore seize the High Appeal of Commission to request the cancellation of decision of the Organization and see his brand restored.
The Commission may make Mr. LOBO win the case or confirm the decision of the Organization.
What will happen if another physical person or company take the right to register the same trademark to the OAPI?
In this case, Mr. LOBO must introduce an opposition remedy to the Organization, in accordance with article 18 of the above-mentioned annex. OAPI will send a copy of notice on opposition to the other party or their attorney, who may respond to the notice motivating its response, within three months, renewable once. This response will be communicated immediately to the opponent or his attorney. If his reply does not reach the Organization within the above-mentioned period, the depositor will be deemed to have withdrawn his request for registration and it will be canceled.
Note that before taking the decision on the opposition, the Organization will hear all parties or one of them, or their agent, if requested.
Thus, the party who will feel offended by the decision of the Organization, will remedy to the High Appeal of Commission, and this within three months from the notification of the decision of the Organization.
How to do: if a partner company, aware that Mr LOBO makes use of the “Ô ‘severe” mark, having omitted to register it to the OAPI, rushes to deposit it with the OAPI in order to prevail the anteriority of this deposit?
In this case, Mr. LOBO will take action to claim from the OAPI, in accordance with article 5 paragraph 3 Annex III already mentioned.
I.2. The position of Congolese legislation
In the Democratic Republic of the Congo, the law governing industrial property is not clear enough regarding administrative disputes related to industrial property. This is what therefore puts justiciable in front of several unknown equations.
And yet, certain sources claim that our legislation is diversified: it touches practically all aspects and considering that everything has been established. (Lukieni lu Nyimi, “the protection of industrial property in the DRC”, 2004, p 24)
Only article 15 of the Ordinance No. 89-173 of August 7, 1989 relating to measures of execution of the law No. 82-001 of January 7, 1982 governing industrial property gives expressly the possibility to the applicant to use of his remedy right in front of the Ministry having industrial property in his attributions.
Under paragraphs 1, 2 and 3 of the article mentioned provides: “The Department of National Economy and Industry examines whether the invention which is the subject of the request is not patentable regarding the article 12 of the law, in which case he rejects the request and notifies the applicant the reasons of rejection.
The applicant has the right to object to the decision of the Department of National Economy and Industry, within the period provided for in article 11, paragraph 3, of this Ordinance.
After having heard the objections, the Department of Economy and Industry takes the final decision (…) “.
As formulated, the last paragraph of the aforementioned article suggests that the decision of the Minister of Industry is not subject to remedy.
The processing of remedy by the administration is subject to the payment of tax established by inter-ministerial Order No. 016/CAB/MIN/IND/2017 & No. CAB/MIN/FINANCES/2017¬ / 036 of 11 August 2017 fixing the rates of duties, taxes and royalties to be collected on the initiative of the Ministry of Industry.
However, it should be noted this interministerial Order mentioned presents the gaps at several level, because it mentions a remedy tax without even specifying the type or nature of this remedy, while the administration is examining several forms of remedy. Namely: the remedy in case of rejection of request for the registration of industrial property title, the remedy against the rejection of request for the restoration of title, or the remedy against decisions to reject application for entry in the registers.
Some people have tried to affirm and justify the payment of these various taxes by the fact that, if certain administrative remedies in industrial property field are not expressly determined by legal and regulatory texts applicable, nothing does not prohibit the applicant from bringing his remedy in accordance with the common law.
In fact, one does not need to be a specialist in administrative law to know that, on the one hand, the remedy (graceful or hierarchical) in Congolese administrative law is free, and, on the other hand, any tax that does not have a legal basis can be considered as illegal, and therefore its perception is questionable.
After the exhaustion of administrative remedy, the applicant, who has not obtained satisfaction as result of his action, may lodge a jurisdictional remedy.
II. Jurisdictional remedy
A. Viewpoint of the Bangui Agreement
In the OAPI area, the decisions of the High Appeal of Commission are not subject to remedy, because they are taken at first and last instance, and this in accordance with article 8 of Annex V related to Bangui Agreement, which expressly provides that: “Within 30 days, from notification date of rejection, the applicant can lodge appeal to High Appeal Commission; so this Commission judges the request at first and last resort.”
We think that as the system consecrated by the Bangui Agreement is imperfect, since it does not establish a supranational jurisdiction of intellectual property, which it should be possible to challenge the decisions of the Higher Appeal Commission.
It should also be noted, however, that there is nothing prohibit the complainant to take simultaneously action in front of the Courts and Tribunals of the member states and the Organization, for instance, seeking to wipe out the effect of industrial property title.
The Bangui agreement, although more advanced than Congolese law, nevertheless presents some imperfections. The informed observer will note that, unlike other industrial property titles such as patents, utility models, brands, etc., the Bangui legislator failed to provide into Annex IV relating to industrial designs and provisions on the exercise of action for nullity.
Mr. Stéphanie Ngo Mbem, lawyer considers in this regard that: “this legal vacuum was appropriately filled in France by the Ordinance of July 25, 2011 on designs and models. This text institutes an action for nullity and empowers anyone interested in practice it when it comes to contest the novelty of the design and models. The Bangui legislator could take inspiration from this France Ordinance to include it into Annex IV, as it has already done for patents, utility models and brands. » (The challenges of protecting industrial designs and models in the development of Africa, his thesis, p260).
The author’s wish has been taken into account by the Bamako Agreement, which revised the Bangui Agreement, but unfortunately its entry into force continues to delay, due to the fact that it has not received the signatures of all member States.
B.Viewpoint of Congolese legislation
In the Democratic Republic of the Congo, the jurisdictional remedy is exercised, in accordance with the Organic Law of October 15, 2016 relating to the organization, competence and functioning of administrative jurisdictions order.
Article 85 of the aforementioned Organic Law enumerates the competences of the Council of State as follows:
- The litigation section of the Council of State is the judge of all cases which fall within the contentious jurisdiction of the Council of State.
- The litigation section of the Council of State is competent, at first and last instance for cancellation actions related to violation of the law, edict or regulation, brought against acts, regulations or decisions of the central administrative authorities or of public bodies placed under their supervision as well as those of national bodies of professional orders.
- The violation of the law, edict, regulation, custom and the general principles of law includes in particular: incompetence; excess power; false application or misinterpretation of the law, edict or regulation; non-compliance with the law, edict or regulation of the act, regulation or decision from which it was applied; violation of the substantive forms or the prescribed forms on nullity penalty of the acts; change nature of facts and acts; negation of faith due to acts.
- The litigation section rules sovereignly, taking into account the facts and legal circumstances relating to actions for suspension brought against these acts.
The Minister of Industry being an authority of the central power, if he takes an illegitimate decision in industrial property field, accordingly it is right to exercise a cancellation remedy for the violation of the law at the courts.
In view of above, if it is true, on the one hand, that cancellation actions to the decisions of the Minister of Industry are within the competence of the Council of State, it is also true, on the other hand, that nullity actions related to claims and counterfeit fall within the competence of the Courts of First Instance or the Courts of Commerce (for traders).
Comparatively to the Bangui Agreement, the claim can be brought in front of High Appeal of Commission, while according to the Congolese law the competence of such action falls into the competence of the Courts and Tribunals.
- Concerning the patent: Article 53 of the aforementioned Law
Paragraph 1 of the indicated article provides that if a patent or certificate of encouragement has been requested, either for an invention or a discovery withdrawn from the holder or his beneficiaries, or in violation of legal or conventional obligation, the offended person can claim paternity of request or ownership of the title issued.
Paragraph 2 prescribes that it succeeds, the action for claim operates the subrogation in favor of its author.
Paragraph 3 specifies that in this case, the Tribunal will order:
– either that the depositor transfers his rights and obligations to the beneficiary within a specified period; in which case, the transfer will only have effects for the future;
– either that the person entitled is subrogated in all the rights and obligations of the depositor, patented or certified; in this case, the subrogation is retroactive.
- Regarding the model or industrial design: Article 121 of the same law
“The owner of model or industrial design has, in defense of his rights of nullity action, in claim and counterfeit as regulated by title I above”
- Concerning the right of brand: combination of articles 138 and 121 of the aforementioned law
Under the terms of this article 138, “the rights and obligations of the owner of brand are, by analogy, the same as those provided (…) for model or industrial design.”
Emile Lambert OWENGA a lawyer writes on this subject that the action of claim tends to ensure the protection of the rights which are generally and often not yet protected legally. This is the case of action initiated by the owner of invention whose patent has not yet been applied for to defeat the patent application filed for the same invention by someone who surreptitiously withdraws the invention. The purpose of this action is to claim paternity of the application applied by the defendant or ownership of the patent eventually issued for the benefit of defendant. When it is successful, the claim action operates subrogation in favor of its author. (Juricongo-No. 5 January-February 2000, p16)
According to him, such action can also be initiated by someone who deposited his brand into ad hoc service of the provincial administration against the author of posterior deposit of the same brand, carry on directly to the Ministry having industrial property in its attributions.
In addition, concerning the nullity of remedy, Congolese legislator provided for it in the field of patent in articles 96, 97,98, 99 and 100 of the Congolese Law mentioned above, while in model and industrial design field, is based on the aforementioned article 121, and finally in brand law, it is article 149 of the same law.
In conclusion, the Congolese legislator as well as Bangui, it exists several things to do in order to improve the procedures rules applicable to the various litigations relating to industrial property law.
However, it should be appreciated the efforts of the OAPI member states by carefully reviewing the Bangui Agreement through Bamako Act which resolved the legal voids described above, despite the fact that it has not yet entered into force.
Rights of holders must always be alert to push away in front of the administration or the Courts and Tribunals any kind of violation or threat against their rights.
Attorney on Intellectual Property for MBM-CONSEIL.
Tel : +243 998378810
Email : firstname.lastname@example.org; email@example.com