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26 November 2019PatentsSarah Morgan

IP in Africa: Project Africa

As the second largest continent, with a land area of 11.7 million square miles, it’s no surprise that Africa is a melting pot of cultures, communities and different IP laws.

Across Africa, nations may take disparate approaches to IP but all are using a multi-faceted approach to boost the use and understanding of this valuable kind of protection.

With 106 members, the World Intellectual Property Organization’s (WIPO) Madrid Protocol is perhaps the perfect example of coordination and harmonisation.

While 38 African countries are Madrid members, however, only 11 have properly ‘domesticated’ the Madrid Protocol through amendments to their national trademark legislation, together with the implementation of enabling regulations.

The main issue, says Megan Moerdijk, South Africa-based partner at Adams & Adams, is the lack of enabling legislation.

She adds: “Many of the countries that have signed have not passed any domestication legislation, so there is no mechanism or procedure in place that equips the national offices to deal with the international registrations.”

The African Regional Intellectual Property Organization (ARIPO) is not party to the Madrid system but Fernando dos Santos, director general of the organisation, is aware of the issues.

“This problem has been expressed in several forums. Some of the member states have become party to the system but do not have regulations in place to use for processing of Madrid applications,” he says.

Even in the countries that have amended their legislation, practical issues exist.

“If one has regard to the economic and political turmoil that many African states are dealing with, it is perhaps not surprising that the implementation of international treaties does not enjoy priority treatment at governmental level,” claims Moerdijk.

It’s important that national laws clearly recognise that international registrations have the same force and effect as national registrations, according to a memo from Adams & Adams.

Without this recognition, national courts are tasked with determining whether rights arising from an international registration trump rights arising from national common law or prior trademark registrations.

"ARIPO is starting to design curricula for education at all levels for uptake by the member states." - Fernando dos Santos, ARIPO

“The wheels of justice turn very slowly in most African countries. The courts are backlogged,” says Moerdijk.

“There are hardly any judges experienced in IP, which is not as prominent an area of law as one finds in developed, first-world countries.”

Despite the growing prevalence of litigation in Africa, in most of the Madrid member countries, national courts haven’t decided on many IP matters and there are few precedents, according to a memo from the law firm.

“More often than not, the presiding judge or adjudicator will not have the benefit of earlier judgments to rely upon when hearing and ruling on a dispute which may revolve around the national enforceability of an international registration,” said the memo.

In a country where no formal domestication has occurred, the judge may be unable to find a reference to the Madrid system in the national IP law.

In March 2015, the administrative council of regional system Organisation Africaine de la Propriété Intellectuelle (OAPI) ratified the Madrid Protocol unilaterally and on behalf of the organisation’s 17 member countries.

Moerdijk adds: “There was a general unhappiness among those states about the accession, but it seems that although this unhappiness prevailed, OAPI has taken designations on, and is advertising them as required. Things appear to be progressing.”

Aside from procedural issues, there are also practical difficulties. According to dos Santos, many Madrid-system states are not able to handle the volume of applications.

Under the Madrid system, offices must examine international registrations within 12 months (this is extendable to 18 months upon application). If the national trademark office doesn’t notify WIPO of any objection or opposition to the trademark within this time frame, WIPO and the trademark owner will consider the mark registered and enforceable.

Adams & Adams is aware of situations where owners of international registrations were under the mistaken belief that they had secured enforceable rights in certain African Madrid member countries but later learned this wasn’t true.

Other options exist for international brand owners looking to register their IP in Africa. However, national routes for registration can become expensive and, as Dos Santos explains, users complain of the time it takes to register their marks and receive communication from the states.

The ARIPO route, which can cover ten states with one application (making it cheaper), offers the assurance of registration where no problems arise, he adds. But, dos Santos warns, the challenge of enforcement comes in other countries.

With 19 member states, ARIPO can grant and administer IP rights on behalf of its member states.

Carole Theuri, founder of Kenya-based Muthoni Advocates and consultant for Rouse Africa, says that countries usually sign up to have their applications handled by the ARIPO registry when the IP offices themselves do not have sufficient resources.

She adds: “I don’t expect Kenya ever to use ARIPO for trademarks— it is not profitable for registry. For patents, ARIPO has good examiners so a lot of countries defer to the organisation, particularly countries that are not very strong in examination. However, Kenya offers good examination in terms of patents.”

The Kenyan Trademark Act recognises ARIPO trademarks although it has not taken and may not ever take the necessary steps to be party to the system.

A knowledge economy

This means there’s collaboration in terms of unified examination of patents and trademarks because the countries use one registry, adds Theuri. But, in terms of other IP rights, it is unlikely that there will be similar collaborations.

She notes two exceptions where cross-country collaborations on IP issues are taking place: the African Open Innovation Research (Open AIR) project and the East Africa anti-counterfeit network involving coastal and land-locked countries.

"There's an understanding of basic IP concepts, but not the nuances of the system." - Carole Theuri, Muthoni Advocates

Caroline Ncube, professor at the University of Cape Town and the South African Research Chairs Initiative (SARChI) research chair in IP, sits on the international steering committee of Open AIR, a collaborative research network of scholars studying knowledge governance and innovation in Africa.

The network has conducted studies in 15 African countries and has “hubs”—research centres—in several African countries and one in Ottawa, Canada. It has been conducting research to answer two questions.

First, how can open collaborative innovation help businesses scale up and seize the new opportunities of a globally networked knowledge economy? Second, which IP and other knowledge governance policies will best ensure that the social and economic benefits of innovation are shared inclusively?

“Generally, I would say that all collaborations ought to seek to improve the lives and livelihoods of communities, for instance by reducing poverty and inequities.

“If this was a goal of a partnership or project, then equitable benefit-sharing or remuneration would be one of the key tenets,” says Ncube.

In terms of anti-counterfeiting activities, Theuri explains: “I haven’t heard any news of countries cooperating in terms of IP other than in countries which receive imported goods destined for landlocked countries that are suspected to be counterfeit.”

Uganda and Kenya have a system of secured delivery for shipments that the Kenyan Authorities suspect are counterfeit. When the goods reach the Uganda/Kenya border the authorities open the shipment and investigate or prosecute the matter further, she adds.

ARIPO doesn’t directly handle enforcement issues, but it does collaborate with its member and observer states and strategic partners on the enforcement of IP rights.

Since 2015, ARIPO and its partners have been training police officers and developing toolkits with WIPO, while encouraging countries to customise the toolkits according to their jurisdictions and use them in building initiatives.

Kenya, mainland Tanzania, Zambia, Rwanda, Malawi, and Zimbabwe have all introduced the IP curriculum into their police colleges. Other countries are working hard toward the same goal, with train-the-trainer programmes for police and prosecutors being undertaken for ARIPO member and observer states.

ARIPO has also trained judicial instructors and prosecutors across Africa in partnership with the US Patent and Trademark Office and US Department of Justice, with follow-up training for judicial officers expected next year.

Education integration

Raising IP awareness is a difficult task wherever you are in the world, as evidenced by the numerous initiatives spearheaded by IP offices globally.

From ARIPO’s standpoint, a lot is being done with limited resources to raise IP awareness in its member states.

“The main reasons IP integration is not prevalent are cited as low awareness and different levels of development by the states. This should change in the next few years as ARIPO is starting to design curricula for education at all levels for uptake by the member states,” dos Santos explains.

The office participates in regional and international exhibitions, radio shows and public talks, and forms partnerships and coalitions with different IP institutions and regional economic blocs.

“At the moment the groundwork has been laid by training Master’s in IP graduates for all the member states. ARIPO has done a lot more, mainly targeting tertiary education and research institutions in the member states,” says dos Santos.

“Ultimately, integrating IP into education at all levels remains the province of individual states at a national level. Most of these are only starting to warm up to the idea now.”

In Kenya, IP has emerged into the public’s consciousness because of the Copyright (Amendment) 2019 Bill, which aims to address concerns about the collection of licensing fees and the disbursement of royalties. It was signed into law in September by Kenya’s President Uhuru Kenyatta.

“People are aware of IP because of royalties, but not so much on the invention side. There’s an understanding of basic IP concepts, but not the nuances of the system,” says Theuri.

South Africa faces its own problems on IP education. “Our basic education system in South Africa faces huge challenges which, in my view, mean that aspects of IP will not be integrated for many years to come,” says Moerdijk.

She believes that, in Africa as a whole, IP is a subject first encountered only at tertiary education level.

Ncube is also unaware of any IP teaching at high school or lower levels. She suggests that state agencies, which provide support for the informal sector, ought to include some IP awareness for small businesses.

IP education can be used to further socio-economic goals in African countries by extending education to entrepreneurs, such as providing training as part of incubator initiatives, she adds.

“If one considers non-governmental organisations supporting women entrepreneurs, such as groups engaged in producing traditional crafts, I would say that IP awareness campaigns would also be useful in this context.

“The same can be said in relation to indigenous communities and those providing support and capacity-building to them,” explains Ncube.

Dos Santos concludes that there are successes and failures.

“The main challenges are mainly limited resources and, to a certain extent, low political will. On the other hand there have been major successes in developing IP champions who continue to spread the IP gospel,” he concludes.

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