Filing Intellectual Property (IP) in Africa
What are some of the most important jurisdictions for IP on the continent?
We would say of course that all countries in Africa where an IP rights holder intends selling their products or services are equally important, but from an economic perspective, the most important jurisdictions would certainly include Nigeria, Egypt, South Africa, Algeria, Morocco, Kenya, Ethiopia, Ghana, Tanzania, Angola, as well as the two regional offices known by the acronyms ARIPO and OAPI.
Africa is the only continent in the world that has two regional offices, which we will elaborate on later, but in summary, OAPI, which is mainly French-speaking, covers 17 member countries in West Africa and ARIPO, which is largely made up of English speaking African countries, offers protection for 11 countries in respect of trade marks and 18 member countries in respect of patents.
We generally only recommend using the ARIPO system to protect patents. There are some concerns regarding the effectiveness and enforceability of ARIPO trade mark registrations in several of the member states.
Read more about Trade Marks in Africa – The big picture.
Who are ARIPO and OAPI in Africa?
ARIPO and OAPI are very effective means for obtaining extensive protection in Africa, between them, the regional offices cover up to 35 countries.
The first regional office is the African Regional Intellectual Property Organization (ARIPO). By way of background, the ARIPO office was created in 1976 and membership is open to all member states of the United Nations Economic Commission for Africa. The headquarters are in Harare, in Zimbabwe. As mentioned, 18 countries are members of the protocol governing patents, the Harare Protocol. The majority of these member states are English speaking countries and all communication with the ARIPO office is therefore in English.
All of these countries are also members of the Patent Corporation Treaty, more commonly known as the PCT. ARIPO specifically requires the applicant to designate those member states where protection is sought and filing fees then vary with the number of designations.
A patent granted by ARIPO has the same effect as a patent granted under the national laws. Broadly speaking it is simpler and more cost-effective to file a single application designating multiple countries than to file nationally in each of those countries.
The other regional office is the Organisation Africaine de la Propriété Intellectuelle (OAPI). First established in 1962. Most member states are former French colonies in West Africa. Their headquarters are in Yaoundé in Cameroon. Official communications from the office are issued in French but it is possible to file in English and a French translation is not required.
Unlike ARIPO, it is not possible to designate individual countries and a single patent application automatically covers all 17 member states. Also, unlike ARIPO, it is not possible to obtain patent protection nationally in any of the member states as all member countries have renounced the national IP laws in favour of OAPI.
* It is important to note, however, that some very important countries are not members of either of these regional offices and national applications must therefore be filed. In South Africa and Nigeria, for example, are two of the largest economies in Africa but they are not members of either regional office.
OAPI and ARIPO cover different member countries. They have different member countries. So, if you want OAPI, you get those 17 member countries. It’s all or nothing really. ARIPO have an entirely different membership and for ARIPO you designate the particular countries of interest.
* This is an excerpt from our Podcast masterclass which you can listen to here: A primer on filing IP in Africa.
Trade marks at OAPI and ARIPO
ARIPO which works well for patents is much more complicated from a trade mark perspective. There are different member countries for patent and trade mark purposes in ARIPO and there is some overlap, but there are only 11 member states for trade mark purposes and there are some real problems with the potential enforceability of ARIPO trade mark registrations.
The reasons are historical but mainly because most of the member states of ARIPO are old English colonies at one time in their history, and they have English common law as their legal heritage, in terms of that English heritage a treaty, such as the treaty which established ARIPO, can’t be self-enacting you have national legislation to take into account the obligations which arise under a national treaty and only a few of the ARIPO member states, for trade marks purposes.
It is different for patents, but for trade mark purposes there are only a couple of member states that have amended their national legislation to take into account the obligations that they assumed under the ARIPO treaty. As a trade mark litigator, we would advise people to think very carefully before they choose to protect their trade marks by the ARIPO route. We would always recommend, for trade mark purposes, that they use the national filing route rather.
The position for trade marks broadly speaking in OAPI is pretty good. The system works very well and the OAPI office is well organised. It deals with matters very methodically, albeit in a bit of a slow way. You have to file a central OAPI application. It’s an all or nothing regime. So once an OAPI trade mark is registered it automatically covers all 17 member states and those member states are mostly Western Central African countries. With the OAPI patent system, the trade mark system in OAPI has likewise replaced the national regimes of the member countries. So, you can no longer file nationally if you want cover in one of the OAPI countries.
Are patents examined in any of the IP offices?
Historically there has been a lack of qualified and experienced patent examiners, but things are changing and increasing numbers of countries across Africa do now conduct examinations. ARIPO and OAPI both have provision for examination in their law but at present only ARIPO examines as to substance.
In OAPI some examinations are limited to sort of a formalities exam, but we do anticipate that eventually, they will start to conduct substantive examination as well. In some other jurisdictions, such as Kenya and ARIPO, examination is actually of a very high standard. Examiners base their objections, if they have any, on objections raised in other examining offices.
Some countries such as Uganda and Ghana refer their national applications to ARIPO for examination because they simply don’t have the training or the resources themselves to conduct examinations. Across the continent many countries in North Africa conduct examinations and it is anticipated that South Africa will introduce substantive examinations in the next year or two.
Are trade marks examined in any of the IP offices?
The examination of trade marks is far simpler from a technical point of view than the examination of patents and almost all trade mark regimes across Africa do have a substantive examination for trade mark applications. A notable exception is OAPI where like the patent regime, they only examine for formal compliance so as long as your application is in order, you have paid the fees and so, they will register the trade mark.
It’s a double-edged sword because it is advantageous to trade mark owners because they get easy and quick registration but it means that the onus is on the trade mark owners to watch out for pirate filings because the office is not going to refuse an application ex officio even if it is identical to an already registered trade mark.
Major updates regarding IP laws on the continent
The first thing to say is that the wheels turn slowly in Africa, especially the legislative wheels. So, many of the laws are very old and relatively out of date when you compare them certainly to Europe and so. Even the IP industry has remained active across Africa through the pandemic, there haven’t been very many major updates to IP laws in the last couple of years.
The one to note though is that the Somali Intellectual Property Office has been established. This is important and is a notable development as people will recall that Somalia went through a civil law in the early 90’s and the IP office has been closed since the start of the civil war. So, it is never been possible to file a trade mark or patent, or not never, but not since the start of the civil war and not for over 30 years. It hasn’t been possible to file for trade marks or patents in Somalia.
There was a local custom of publishing cautionary notices and that happened and people published details of their trade marks in newspapers but I am unaware of any litigation that ensued as a result of publishing cautionary notices. The IP office has now been established and trade mark filings are possible. There are a lot of procedural issues that still need to be clarified and we are expecting IP legislation with transitional provisions that will recognise existing rights, so in other words, pre-1990 rights that are expected this year but, it’s a start, the wheels sometimes turn very slowly in Africa.
In the meantime, you can continue to publish cautionary notices but we’d recommend that that practice is discontinued and people use the formal route for filing trade marks. There is still no patent or design registration procedure at the moment and we are not aware of any developments in that regard but hopefully, it will come online before too much longer.
Do African countries have specialised IP courts?
Yes, on the patent side, only South Africa has specialised IP courts at present. There’s been very, very little patent litigation across the rest of the continent so far but we are confident that where we can obtain patent rights, we can also enforce them and we’ll see how we go over time but at the present, there is very little precedent to go on.
We’re confident in most countries, there may be one or two exceptions where it is difficult to get a granted patent right, which is Angola, just because of a lack of good procedure basically at the Patent Institute.
Do African countries have specialised trade mark courts?
Like patents, there are no specialised courts in Africa for trade mark purposes and speaking as a litigator, this can lead to practical problems because apart from South Africa where the courts hear a lot of IP cases, the courts in Africa generally hear very few trade mark cases, very few patent cases and the danger is that you come across judges who hear disputes and then misinterpret the laws quite simply because it is a kind of a technical are.
Some countries especially in North Africa, like Tunisia and Morocco, try to compensate by having court-appointed officials, so people who are IP experts and if a judge comes across a case that he is not really sure of the technical aspects of it he can refer the matter to an IP expert who will render an opinion that the judge can take into account when he is making his or her decision, that’s as close as you get to specialised courts anywhere in Africa.
Can you afford to file patents and trade marks across the continent?
Overall, we don’t believe that cost is a barrier to innovation but more does need to be done to educate people regarding the advantages of IP protection. It is a huge continent and there are huge variations in filing and prosecution costs across it, so it is very difficult to generalise.
For example, obtaining a patent in Nigeria is very inexpensive but other jurisdictions may have very high official fees, surcharges, it might have very high renewal costs, such as in Kenya for example. On the whole, securing patent protection in Africa is relatively inexpensive compared perhaps to the USPTO or the EPO or Japan and China.
Registration is your best friend when it comes to protecting your rights so costs are a relative concept, for example, costs for filing in OAPI appear high at first glance but are actually pretty reasonable when you consider that an OAPI registration covers 17 countries for example.
Trade mark registration in Africa, the costs vary greatly across the continent but they are not unreasonably expensive, or certainly, we do not believe them to be so.
All things considered and despite there being no specialised IP courts apart from South Africa, we strongly recommend investing in and registering IP rights in Africa. There are a few countries where you have to have a registered right in respect of trade marks to be able to enforce it.
Generally speaking, registration is the safest and most cost-effective option. In Africa it is not unusual for rogue individuals and companies to register foreign brands, even very famous ones that have not been registered, often leaving the true owners with little or no recourse except paying out a huge settlement in order to retrieve their trade mark.
Although owners of unregistered trade marks may in specific circumstances rely on passing-off and where applicable provisions for the protection of well-known marks, that process can be arduous and the result uncertain. It is therefore even more important in Africa than elsewhere to register IP rights.