Intellectual property in Africa – An introduction
With 59 countries and island states, Africa is the world’s second-largest continent. More than 1.3 billion people call Africa home, and that number is growing rapidly. There’s a great deal happening in Africa right now, with the African Continental Free Trade Area (AfCFTA) hogging the headlines – AfCFTA is a multinational agreement that came into effect on 1 January 2021, an agreement that has amongst its long-term goals economic integration and a degree of intellectual property alignment.
It’s no surprise that many multinational companies now consider the protection of intellectual property in Africa to be essential. The trade mark is the most commonly protected form of intellectual property in Africa. In this note, we look at how brand owners can register their trade marks in Africa.
Trade Marks in Africa – The big picture
When it comes to trade mark registration there are a number of possibilities:
These are available in all African countries, other than the OAPI countries (see more on the OAPI regional registration system below).
International registrations (IRs), in other words, trade marks obtained under the Madrid Protocol. A significant number of African countries have signed up for the Madrid Protocol. But it is important to note that there are countries/regional systems where, in our view, IRs are not valid and enforceable, due to a failure on the part of these countries/regional systems to specifically incorporate the Madrid Protocol into national law. These countries/regional systems are:
Eswatini, Lesotho, OAPI, Sierra Leone and Zambia.
It is also important to note that there are certain doubts as to the validity of IRs in the following countries:
Botswana, Gambia, Ghana, Liberia, Malawi, Kenya, Namibia, Sao Tome e Principe, Tunisia and Zimbabwe.
We suggest that you seek legal advice if you wish to register a trade mark in any of these countries/ regional systems.
In Africa there are two regional registration systems:
OAPI is a regional registration system that enables a brand owner to protect its trade mark in all of the OAPI member countries through a single registration – it is important to note that the countries covered by the OAPI registration system do not have national registration systems.
An OAPI registration covers the following 17 countries:
- Burkina Faso
- Central African Republic
- Republic of Congo
- Equatorial Guinea
- Côte d’Ivoire
ARIPO is a regional registration system where a trade mark owner files an application with a central office (in Harare, Zimbabwe), designating as many of the ARIPO member states that it wishes to include in the registration – ARIPO members states do all have national registration systems. The individual designations are then considered by the IP offices of the member states.
The ARIPO member states are:
- Sao Tome e Principe
- Tanzania (Mainland)
It is important to note that there are doubts as to whether ARIPO registrations are effective in the following countries:
Eswatini, Gambia, Lesotho, Liberia, Uganda and Tanzania.
These doubts flow from the fact that the relevant legislation, the Banjul Protocol, has not been specifically incorporated into national laws of these countries.
Trade Marks in Africa – Owners’ considerations
Trade mark owners seeking protection in Africa will need to consider various issues, such as:
Conducting a trade mark search before filing is generally advisable. One reason for conducting a search is to establish whether there is an infringement risk. Another reason is to establish whether there is likely to be an objection to registration. In Uganda a pre-filing search is compulsory.
The benefits of registration
One reason for registering a trade mark is to acquire the right to use the trade mark. Another is to acquire the right to enforce the trade mark against third parties.
It’s worth noting that the enforcement of trade mark IP rights is becoming increasingly common in Africa – to the extent that there is still a belief that there is little point in registering IP rights in Africa because there is little prospect of enforcing those rights, that thinking should be jettisoned.
A trade mark owner may also consider the licensing arrangements it has with local companies when it comes to deciding whether to seek a trade mark registration.
Types of trade marks in Africa
In Africa, there is protection available for a variety of marks including certification marks, collective marks and defensive marks.
What to file
It sounds obvious but trade mark owners should be registering those trade marks that they are most likely to use and, indeed, those trade marks that are most likely to be used by third parties without authority. In short, those trade marks they feel are most in need of protection.
Registrability and language
It is important to bear in mind that many languages are spoken in Africa including English, French, Portuguese and Arabic. The meaning that a word mark may have in the country where it is being filed obviously needs to be considered in order to determine if it is registrable.
Where to file?
A trade mark owner should decide which countries are the most economically significant for its goods or services. It should also consider which countries provide for effective enforcement. A trade mark owner should certainly consider the big economies like Nigeria, Egypt, South Africa, Algeria, Morocco and Angola. As well as countries where counterfeiting is known to be rife like Kenya and Tanzania. Island states like Mauritius, Madagascar and Seychelles should not be overlooked.
The regional systems ARIPO and OAPI – which between them cover a significant part of the African continent – are obviously very important.
When to file?
In Africa, the trade mark registration process can be slow. Allow enough lead-in time ahead of filing and file as soon as possible.
In whose name to file?
Obviously, the application should be filed in the name of the true owner. Although most trade mark applications are filed in the name of corporations, it is worth noting that individuals can also register trade marks.
In many African countries the procedures will seem broadly familiar in that there will be examination, advertisement, provision for opposition, issuance of a registration certificate, provision for cancellation after registration, and renewal. In Mozambique it is necessary to file a declaration of intention to use long after registration.
In most countries, the term is 10 years.
The cost of obtaining a trade mark registration varies greatly from country to country.
Regulatory issues, legal advice
Finally, it’s worth mentioning that a trade mark owner who is considering filing an application may well need to consider regulatory issues such as the relevance of the National Agency for Food and Drug Administration and Control (NAFDAC) in Nigeria, the customs recordal requirement in Kenya, and the informal customs watch systems that are available in countries like Ghana and Egypt. Legal advice is important.
Anti-Counterfeiting in Africa
Counterfeiting is a significant problem in Africa and it is, of course, one of the reasons why trade mark registration is so vital. Here are some general observations about the state of anti-counterfeiting in Africa:
In our experience there is a reasonably effective protection against counterfeiting in the following African countries:
- Cote d’ Ivoire
- South Africa
Customs watches are often available in Africa, sometimes on an informal basis.
In Kenya customs recordation is now a requirement – please note that this recordation is additional to the trade mark registration. Brand owners with trade mark registrations in Kenya should get legal advice on this issue as soon as possible.
In Nigeria NAFDAC (see earlier) is able to conduct raids and seize infringing goods. The Standards Organisation of Nigeria (SON) also gets involved in anti-counterfeiting.
In South Africa, there is specific anti-counterfeiting legislation, the Counterfeit Goods Act. As a result, the Customs authorities and the South African police are often involved in anti-counterfeiting operations.
The life of the African anti-Counterfeiting Attorney
We’ll end with a brief insight into the life of an African anti-counterfeiting attorney.
Implements elaborate anti-counterfeiting programmes – these programs may include brand identification training and the training of customs officials.
Works closely with investigating firms and customs officials across Africa, identifying counterfeits, detaining containers and enforcing rights.
Works closely with customs officials across Africa – this includes the Anti-Counterfeit Agency (ACA) in Kenya, the Federal Competition and Consumer Protection Commission in Nigeria, and an array of agencies in Tanzania.
Is involved with the recordal of trade marks with Customs and Excise departments across Africa.