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Validity and enforceability of international registrations in African countries through to long response times from local registries – these are some of the concerns and challenges that international brand owners face when looking to protect their trade marks across such a vast continent with numerous laws and practices. Similar issues exist in the Caribbean.

We work with companies to ensure that, as a minimum, their house trade marks are protected in African countries that are known as counterfeiting hotspots, those with strong economic markets where their goods and services are available, and countries where their brands are being manufactured.

Our trade mark search, formalities and prosecution teams manage trade mark portfolios at all stages:

• Advice on all aspects of filing strategies such as the best way to protect each brand (e.g. colour, 3D, word marks) to a tiered approach in terms of choosing which countries to focus on
• Initial trade mark searches and advice on the best clearance strategy
• Specification drafting and review
• All aspects of filing trade mark applications through to registration including providing opinions on the registrability of trade marks
• Official actions including responding to objections raised by Registrars and third parties
• Recording changes in name and address of owners, assignments and licenses
• renewal of trade marks

Our litigation and anti-counterfeiting teams are at hand should any enforcement issues arise such as oppositions against trade mark applications or negotiating settlement or co-existence agreements, when necessary, to overcome prior mark citations.

Important considerations when filing trade marks in Africa

• Protect your non-core brands and services as well as your house brands and services - they can be equally as vulnerable if they are not adequately covered. In Africa it is even more important to register intellectual property (IP) rights, as enforcing unregistered common law rights can be fraught with difficulty. It is not uncommon for rogue entities to identify IP rights that have not been registered and register those rights in their own name
• Sufficient lead-in time is essential to protect marks across Africa, especially in ‘first to file’ countries - the prosecution timeframe in each country depends on the type of system, whether examination is involved, resources at each Registry and their capacity to handle volume
• Searches are highly recommended although these can be challenging due to different standards of record-keeping at each registry (searches are compulsory in Uganda)
• Many countries still require a separate application for each class of goods or services but multi-class systems are available in 20 countries (including ARIPO and OAPI)

contact us for further information.