Trademark background in Africa
For some trademark owners, Africa is little more than an after-thought. This makes no sense: Africa is a dynamic continent, one with a remarkably young population, and one that is, thanks to the African Continental Free Trade Agreement (AfCFTA), on its way to becoming a single market with a degree of IP alignment.
However, Africa can be confusing. It offers multiple registration options:
- national registrations;
- regional registration systems – OAPI in primarily French-speaking countries and ARIPO in primarily English-speaking countries, see details later;
- the international registration system (Madrid Protocol).
We should point out that there are sometimes doubts as to whether an African country that has failed to formally incorporate an international agreement into its national legislation has in fact properly acceded to that international agreement. We recommend that trade mark owners seek advice before filing through the regional or international systems.
Summarised below is a five-step plan for protecting trademarks in Africa.
Step 1: Search, always search
In Africa, searching is tricky. There are countries that still rely solely on manual records and countries where the electronic database is incomplete, so additional physical searching is required. There are countries that belong to the Madrid Protocol, yet international registrations do not show up on the national database.
There are also countries that do not allow third-party access to the electronic database. Much of the searching done by third parties is based on official journals, but with time-lags of up to 24 months between filing and publication, these searches are often incomplete.
Despite all this, searching remains important. In many countries, there is official examination for prior rights, so it is clearly useful to know about possible obstacles in advance. Searching in Africa may be difficult, but it should be done.
Step 2: Register, but consider the options
Registration is vital, especially in countries where it is not possible to rely on well-known mark protection or passing off – but which route to take?
These are available throughout Africa, but not in the countries that belong to OAPI (see below).
African Intellectual Property Organisation (OAPI)
The countries that do not have national registrations are the French-speaking countries that belong to the OAPI regional registration system.
Here, a single registration automatically covers all 17 member countries.
A trademark owner can get protection in countries that belong to the ARIPO trademark system by filing a single application together with a designation of the countries where protection is required.
A considerable number of African countries are now members of the Madrid Protocol, so trademark owners can get protection in these countries through an international registration. Yet, as mentioned earlier, there are potential problems regarding enactment in national law.
For more insight read our Trade mark introduction – a complete guide.
Step 3: Monitor and oppose
Monitoring is important – this relates not only to actual and virtual marketplaces for infringements, but also to trademark filings. A trademark opposition is generally far easier than a trademark cancellation. Many trademark oppositions, particularly where pirate filings are concerned, are not defended and, in a number of countries, this has the result that the opposition succeeds by default.
Step 4: Consider whether non-use is really a risk
Multinationals are sometimes nervous about filing a trademark opposition because they fear that they may be required to file evidence of their own use in the particular country. However, in most countries it is not sufficient for the applicant for registration to respond to an opposition by simply alleging non-use: it must file a formal application for revocation.
Few are prepared to go to these lengths, and the risks involved in filing an opposition should be carefully considered.
Step 5: Deal with counterfeiting
Counterfeiting is a problem in Africa, but it is not insurmountable and there are reasons to be positive. A number of African countries now have specific anti-counterfeiting legislation and specific anti-counterfeiting authorities.
Multi-national brand owners should work with enforcement officials (assisting with training where required), and they should avail themselves of the customs watch procedures that exist. However, the most important thing that they can do is also the simplest: register the trademark.
Trademark protection in Africa can be confusing, but registration is vital, especially in countries where it is not possible to rely on well-known mark protection or passing off.
Megan Dinnie, Associate at Spoor & Fisher Jersey.
Read more about – Trademarks in Africa