Mini Africa, the trademark capital

Cameroon is booming and many international brands are vying for dominant positions in its markets. For example, Coca-Cola, Heineken, Renault and Toyota all have a presence in Cameroon. Big telecommunications brands such as MTN, Orange, Nokia, Siemens and Alcatel are there too. It is a good destination for businesses with large international brands.

Trademark filings

Cameroon has the highest number of trademark filings in the central African region, and one of the highest in all of Africa. The African Intellectual Property Organisation (OAPI) has its headquarters in Cameroon’s capital city, Yaoundé.

Intellectual property (IP) rights that are registered at OAPI are valid in 16 countries with a collective population of more than 100 million. OAPI member states include Mauritania, Senegal, Togo, Benin, Burkina Faso, Ivory Coast, Cameroon, Chad, Equatorial Guinea, Gabon and Congo. Brands that are looking to file trademarks in Africa can obtain protection in all of these countries with a single trademark application.

Word marks are very common in Cameroon, and they can be applied for in any language. Marks in Chinese characters have been registered as trademarks. At OAPI, there is no obligation to provide a translation of a character or a word. Most signs, including colours, sentences and phrases, are protectable.

However, sounds and three-dimensional marks cannot be registered as trademarks at the moment. Although word marks can be in any language, trademark applications must be filed in one of OAPI’s official languages. This means that all application forms and correspondence with OAPI have to be in English, French or Spanish.

OAPI has signed up to the Nice Convention, so nothing prevents trademark applicants from applying to have their trademarks registered in all classes. OAPI’s trademarks offer very broad protection and applicants do not have to provide proof of use when applying for trademarks.

The only difference that trademark applicants will find is that separate applications have to be made for goods and services. In most cases, if applicants want to protect their brands from dilution, they will file in all classes with applications for both goods and services.

Applications can name a maximum of three classes for the same price, but after the first three classes, there is an additional cost per class. This means that trademark applicants can obtain broad protection for their marks if they are willing to pay the additional costs.

Trademark cancellations and invalidations

OAPI provides for opposition proceedings, but an opposition action against a trademark must be filed within six months of its being published. Otherwise, litigation has to be pursued in a court of law in an OAPI member state.

Cancellation actions are provided for cases of non-use in Cameroon. If a trademark is not used for five years preceding an application for cancellation, any interested party can file a cancellation action. Actions must be filed in the court of the country in which the agent that filed the mark is based.

This is important for international brands to know, since they will rarely fi le their own trademarks because it is more cost effective to use agents instead.

If an agent that filed a trademark is based in Cameroon, then a cancellation action against that trademark has to be filed in a court in Cameroon. If no agent is used and a trademark owner filed its own application, a cancellation action has to be filed in the OAPI member state where the trademark owner is based.

Th is applies only to trademark owners that reside in the OAPI region. For trademarks that have owners that reside outside of the OAPI region, the correct court shall be that of where an owner’s agent resides, as a trademark owner must file via an OAPI agent.

Identical or similar trademarks can be opposed at OAPI within six months of publication, but there are cases when trademark owners are not aware of the existence of similar or identical trademarks, so they miss out on the opportunity to oppose.

A trademark owner then has the option of going to the correct court to file an invalidation action against any mark that appears to be identical or similar to its own, and causes confusion. Invalidation actions have to be filed in the correct court and trademark owners should follow the same procedure as for cancellation actions. The burden of proof in trademark cancellation actions rests on the owner of the trademark that is being attacked, but this burden is low.

Proof can be in any form, such as an advert in a publication, but it must show that the trademark has been used in the five-year period before the date on which the action is filed. For invalidation actions, any proof can be used, as long as it can show that there is confusion and similarity. Phonetic proof is always useful.

Trademarks cases of this type cost between €4000 and €5000 in the first instance. Cases often take between six and 12 months to conclude. It is up to lawyers to ensure that a case runs as smoothly and efficiently as possible, because the courts in Cameroon are small, with large workloads. Lawyers have to be more efficient and diligent, and work faster for their clients.

This is particularly important when cases have to go to courts outside Cameroon. Local counsel has to be secured, which takes time and costs money. Trademark owners should be aware that Cameroon’s court system is slow. It is lacks any specialist IP judges, so the judges who hear trademark cases have to be informed and educated by litigators.

OAPI has also put a lot of effort into publishing guides for magistrates and judges. In time, it is hoped that they will get to know the subject and its substance.It is important that trademark owners are wary of the threat of cancellation and invalidation actions in Cameroon.

To avoid invalidation actions, trademark owners should make sure that their trademark filings are not similar, or identical, to existing trademarks. Carrying out extensive research before applying could make all the difference. To avoid cancellation actions, it is important that trademarks owners use their trademarks in OAPI member states. Use can be minimal, such as a published advert in any journal.

In the event of a cancellation action, the advert can be used as proof of use and there will be no threat of cancellation. Dealing with counterfeiting Counterfeit goods are generally cheaper than legitimate ones and, as Cameroon is largely a poor country, consumers tend to go for the cheaper, albeit counterfeit, goods.

Most of the counterfeit goods in Cameroon come from places such as China: trademarked goods are copied and the lower-quality productions are imported to Cameroon to meet what can only be described as a demand for cheap goods. Seizures and arrests are the most effective ways of dealing with counterfeiting in Cameroon.

Brand owners must initiate legal proceedings to obtain court orders that allow them to conduct seizures and make arrests. The legal proceedings must be initiated in a court where the court orders need to be executed.

Court orders for seizures and arrests are not difficult to obtain. However, foreign brands owners have to post a bond with the court when applying for an order, to indemnify the accused counterfeiters. The amount is determined by the court.

The value of a bond depends on the quantity of goods that the brand owner wants to seize. A brand owner also has to convince a court that it is the owner of the counterfeited trademark and that the trademark is valid and registered at OAPI.