Assessing the Extent of Liabilities in Trademark Infringement: An Analysis of Annex III of the Bangui Agreement
Keywords:
Trademark infringement, liabilities, Bangui Agreement, Consumer Rights, Trademark ownersAbstract
The notion of goods and services within the market can be distinguished via the use of trademarks, a valuable asset which assigns unique identifier to goods or services permitting buyers to ascertain the source of the products or services, averting confusion in the minds of consumers. Dreadfully, Trademark infringement has always constituted a threat in the brand’s integrity attached to goods making it difficult for trademark owners to fully enjoy these rights, as it destroys the reputation of the trademark owner, divert sales from the mark owner to the infringers and even to an extent foster unfair competition. The objective of this paper is to examine the extent to which liabilities arising from the infringement of Annex III of the Bangui Agreement will be handled. In answering the above problematic raised under the Bangui Agreement as to Trademark liability, it will be necessary in having an indepth analysis of the Bangui Agreement by having an insight on how matters of trademark infringement are handled in situation where the trademark owner’s rights has been affected. From the findings that were
discovered from the above illustration, it was demonstrated that though the provision of the Bangui Agreement as to trademark infringment are clearly defined, the consequences that arises from the trademark infringement continue to be disastrous as the consumers continue to encouter huge effects on the status they occupied. To this end, emphasis has to be made on the effectiveness of Annex III of the Bangui Agreement on Trademarks as far as issues of infringement are concerned.
References
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Article 15 of the TRIPS Agreement.
Article 2(1) of Annex III of the Bangui Agreement.
1). Registration of a mark confers on its owner a right of ownership of the mark forthe goods and services he has designated. (2). The following shall be prohibited unless authorized by the owner: (a)the reproduction, use or affixing of a mark, even with the addition of wordssuch as “formula, manner, system, imitation, type, method” and the use of areproduced mark for goods or services that are identical to those designated in the registration; (b)the suppression or modification of a properly affixed mark; (3). The following shall be prohibited, unless authorized by the owner, if they areliable to create confusion in public perception: (a)the reproduction, use or affixing of a mark and the use of a reproduced markfor goods or services that are similar to those designated in the registration; (b)the imitation of a mark and the use of an imitated mark for goods or servicesthat are identical or similar to those designated in the registration.
(1).The registered mark does not confer on its owner the right to prohibit third parties fromthe use in good faith of his name, address, a pseudonym, a geographical name oraccurate indications as to the type, quality, quantity,destination, value, place of originor period of production of their products or the presentation of their services, providedsuch use is limited to the purposes of identification or information and cannot misleadthe public regarding the provenance of goods or services. (2).Registration of a mark does not confer on its owner the right to prohibit third partiesfrom the use of the mark in relation to goods lawfully sold under the mark on theterritory of a Member State or of a third-party State, provided the goods are completelyunchanged.
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Article 18 of the TRIPs Agreement.
Article 22 of Annex III
Article 24(1), Renewal of the registration referred to in Article 22 above may be secured on application by the owner of the registration, filed during the last year of the 10-yearperiod, on payment of the fees prescribed by regulation.
Under Article 5(1) of Annex III of the Bangui Agreement, ownership of a mark shall vest in the person who files it first but that rule ceases to apply where the filing is fraudulent especially where the filer was aware of prior use of the same sign by a third party.
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to the effect that ;(2)The following shall be prohibited unless authorized by the owner:(a) the reproduction, use or affixing of a mark, even with the addition of words such as “formula, manner, system, imitation, type, method” and the use of are produced mark for goods or services that are identical to those designated in the registration;(b) the suppression or modification of a properly affixed mark;(3) The following shall be prohibited, unless authorized by the owner, if they are liable to create confusion in public perception:(a)the reproduction, use or affixing of a mark and the use of a reproduced mark for goods or services that are similar to those designated in the registration;(b)the imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration.
Any infringement of the rights of the owner of the mark as defined in Article 6 shall constitute counterfeiting. Counterfeiters shall incur civil and criminal liability for their acts.
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Article 4 of the Paris convention.
Article 4 A (2) of the Paris Convention.
Ibid.
Article 1 of the Nice Agreement.
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Article 2(c) (d) of the 2015 revised Bangui Agreement.
Article 42 OF Annex III of the Bangui Agreement.
Of law No 96/06 of 18 January amending the 1972 Constitution, which is to the effect that, the president of the republic shall negotiate and ratify treaties and international agreements.
Law No. 2016/007 of 12 July 2016.
Law No. 2018/002 of 5thApril 2018.
Liability can be defined in the simplest form as legal responsibility for someone’s acts or omissions.
Which is to the effect that, any infringement of the rights of the owner of the mark as defined in Article 6 shall constitute counterfeiting. Counterfeiters shall incur civil and criminal liability for their acts.
Article 42 of the TRIPs agreement.
Article 57 of annex III is to the effect that;(1)The following persons shall be punished by a fine of 5,000,000 to 30,000,000 CFA francs and by imprisonment for three months to two years, or one of the above penalties alone:(a)persons who fraudulently reproduce a mark, even with the addition of such words as “formula, manner, system, imitation, type, method”; persons who fraudulently use a reproduced mark for goods or services identical to those designated in a registration;(b)persons who knowingly sell or offer for sale one or more goods bearing a counterfeit or fraudulently affixed mark, or those who knowingly sell, offer for sale, provide or offer to provide goods or services under such a mark;(c) persons who fraudulently delete or modify a properly affixed mark;(d)persons who fraudulently delete or modify a properly affixed mark such that it is likely to create confusion in public perception, reproduce, exploit or affix a mark or exploit a reproduced mark for goods or services that are similar to those designated in the registration; persons who, in the same conditions, imitate a mark or exploit an imitation mark for goods or services identical or similar to those designated in a registration;(e)persons who knowingly sell or offer for sale one or more goods bearing a fraudulently imitated mark or one bearing indications
liable to mislead the buyer as to the nature of the goods, or persons who provide or offer for sale goods or services under such a mark; and(f) persons who fraudulently exploit a mark for goods marketed by the owner of the mark, but whose state has been subsequently modified or altered.(2) The following persons shall also be punishable with the penalties set forth in paragraph (1) above:(a)persons who knowingly provide a product or render a service other than that requested of them under a registered mark; and(b)persons who make use of a mark bearing information liable to mislead the buyer as to the nature of the goods.
Article 58 of annex III of the Bangui agreement is to the effect that The following persons shall be punished with a fine of 5,000,000 to 10,000,000 CFA francs and with imprisonment for 15 days to six months, or one of the above penalties alone:(a)persons who do not affix to their goods a mark that has been declared compulsory;(b)persons who sell or offer for sale goods that do not bear a mark declared compulsory for goods of that type;(c) persons who violate the terms of decisions taken under Article 1 of this Annex; and (d)persons who incorporate in their marks signs that are prohibited under the provisions of this Annex.
By virtue of article 60(2) of annex III, recidivism shall be deemed to have occurred where the offender has been convicted of one of the offenses specified in this Annex within the preceding five years.
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a.Any person with the locus standi to bring action for counterfeiting may make an urgent application to the competent domestic court seeking, if necessary under financial compulsion, an order against the alleged counterfeiter or the intermediaries whose services he uses, instituting any measure intended to prevent an imminent infringement of the rights conferred by the title or to prevent continuation of the alleged counterfeiting.(2)The competent domestic court may also order all urgent measures on application where the circumstance require that such measures should not be taken inter parties, in particular where any delay is likely to cause irreparable harm to the applicant. If sought through an urgent or ex parte application, the court may only order the measures.
The court seized of the matter shall determine the amount of the damages, having regard to the adverse financial effects, including loss of earnings, suffered by the prejudiced party, the profit made by the counterfeiter and the moral damage caused to the owner of the rights as a result of the infringement.
The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.2. The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney's fees. In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.
