Developing an effective Africa IP plan

The continent’s patchwork of IP systems can seem like the Wild West, but Africa has plenty of protection if you know where to look, explains Mariëtte du Plessis, Simon Brown, Nicky Garnett, and Nthabiseng Phaswana of Adams & Adams.

Can Africa in 2021 still be compared to the 1966 Spaghetti Western, “The Good, the Bad and the Ugly”? And, if so, where do we find these attributes in the various national and regional intellectual property (IP) regimes?

Fortunately, the days of referring to Africa only in negative terms when it comes to IP protection are long gone. The continent is seen as brimming with business opportunities, and interest in its economic potential comes from all over the world. Economic growth is closely associated with progressive IP systems, which must be geared towards fostering technology, industrial development, and innovation.

Key sectors, including construction, financial services, food, agriprocessing, healthcare, manufacturing and retail, present attractive investment opportunities for global and smaller corporations.

Doing business in Africa can be challenging, and the red tape and administrative headaches associated with navigating its 54 countries often seem daunting to new entrants into the market. It is hoped that the African Continental Free Trade Agreement (AfCFTA) will play a big role in highlighting the “good” of Africa. Following delays in 2020, AfCFTA came into force at the beginning of 2021 and, if fully successful, will create the world’s largest common market, containing more than 1.2 billion consumers—which is, according to the World Bank, hoped to increase African trade by more than 50% in the first five years and by 80% in 2035.

In line with these exciting trading opportunities, the IP laws of Africa’s various countries have been rejuvenated in recent years and, in many cases, have undergone a complete overhaul to make provision for compliance with obligations under international treaties and to meet internationally accepted standards—all part of what makes investing in Africa a good idea.

While there have been promising developments on the IP front, there remain a few “ugly” pitfalls which IP owners should be aware of as they navigate the complex IP landscape on the continent.

Predicted increase in African trade by 2035, following this year's launch of AfCFTA

The “bad” is still present in the fact that the IP records of many African countries are not completely digitised, and efficiencies at IP offices are affected by a lack of infrastructure and personnel at registries. Added to this is the negative impact of COVID-19, which has exacerbated the existing backlog affecting operations at many IP offices across the continent.

Trademarks

What should brand owners bear in mind when adopting a trademark strategy in Africa, given that they are faced with national systems and two regional systems, as well as the Madrid Protocol?

It is important for brand owners to be aware that AfCFTA promotes free trade and will take steps in support of trade liberalisation, which promotes the ease of products being placed on the market. Products from member countries will invariably find their way to other member countries throughout the continent, hence the importance of looking for a multifaceted approach when it comes to ensuring that trademark rights are effectively protected.

Considering the potential effect of AfCFTA, it is of paramount importance that brand owners adopt a pragmatic trademark protection and enforcement strategy in Africa.

Important factors

There are various factors that brand owners need to bear in mind. First, the trademark strategy adopted must be tailored to the business and focus of the brand owner. Second, it is important to remember that many African countries follow the so-called “first-to-file” rule. Third, brand owners should be aware of the relevance of common law rights and copyright in enforcement cases. Finally, the recordal of licences is required in many jurisdictions and is relevant before enforcement of the brand owner’s rights can commence.

For example, the recordal of licences is mandatory in Angola, Botswana, Burundi, Egypt, Ethiopia, Lesotho, Libya, Mauritius, Namibia, Nigeria, the Organisation Africaine de la Propriété Intellectuelle (OAPI), Rwanda, São Tomé & Príncipe, Sudan, Tanzania, Zambia and Zimbabwe.

What is the relevance of the first-to-file rule?

Many African countries are considered first-to-file jurisdictions. This essentially means the first party that successfully registers a trademark is considered to be the true owner of the brand, regardless of whether this reflects commercial reality or conflicts with well-known and/or famous rights.

As a result, brand owners who “allow” third parties to secure registrations for their brands, before they do so themselves in these jurisdictions, could potentially find it problematic to use and register their own brands, as common law or user trademark rights are often not formally recognised in national trademark laws.

The first-to-file African countries include Algeria, Angola, the Democratic Republic of Congo, Djibouti, Eswatini (formerly Swaziland), Egypt, Lesotho, Liberia, Libya, Madagascar, Morocco, Mozambique, OAPI, South Sudan, Sudan, and Zambia. Even in Zambia, despite being a common law country, it is not possible to rely only on earlier user rights, following a decision of the High Court of Zambia in the DH Brothers case, which was confirmed by the Zambian Supreme Court on appeal.

Adopting a strategy which addresses the filing of trademarks in important commercial jurisdictions throughout Africa is therefore essential. Brand owners who appreciate these complexities, will prioritise their filing strategy for African jurisdictions to avoid their common law rights being trumped by earlier filed trademark registrations. Brand owners with an interest to trade in a particular African country within a three- to five-year period should pull the “filing” trigger sooner rather than later, to avoid (costly) complications further down the line. While the prosecution of applications can be slow in some jurisdictions, an earlier filing date is key in these first-to-file jurisdictions.

”Many African countries are considered first-to-file jurisdictions.”

Copyright can be a useful tool in circumstances where it can be argued that the registration of an identical or slightly adapted device, logo or character mark (which qualifies for copyright protection), is contrary to law. Although it is possible to rely on copyright in certain instances in trademark oppositions, it is not possible in all African jurisdictions.

For example, in Morocco, the IP office will not take this into account, and it is possible to raise the subsistence of copyright only in an appeal before the High Court. It is also worth mentioning that a handful of jurisdictions throughout Africa offer mechanisms to voluntarily register copyright works, including Nigeria, Ghana and Kenya.

OAPI

Falling in the “good” category is OAPI, the West African regional registry established by the Bangui Agreements encompassing 17, mostly French-speaking, countries. The registry is based in Yaoundé, Cameroon. The system is unique in that the Bangui Agreements function as a national IP code, with member states having renounced their national IP legislation.

Accordingly, a single application filed at the registry covers all 17 member states. Multi-class applications are possible, but brand owners should be aware that two separate applications for goods and services classes must be filed. From an enforcement perspective, the “good” part of the system is that use of a mark in one member country represents use in all member states.

It is possible for the proprietor of an OAPI trademark registration to restrain use of an identical or similar trademark by a third party in any OAPI member country. On the “bad” side, it can be difficult to enforce a registration unless the brand owner has enlisted the assistance of a practitioner familiar with the local practices and systems in that member state. However, it is possible to have successful outcomes, often starting with demands and avoiding the need to institute expensive court proceedings.

Limited examination is conducted by the OAPI registry, and brand owners need to be on high alert to oppose the registration of potentially conflicting marks within the six-month opposition period that takes place after registration. On the “good” side, even though OAPI functions as a first-to-file jurisdiction, it is possible to oppose a mark by filing a claim to ownership. It may be filed by any person who claims to own prior rights to the mark (generally based on evidence of prior use of the mark within the OAPI region, or if the mark is well-known or famous). However, users of the Madrid Protocol must be aware that claim-to-ownership proceedings cannot be filed against an international registration (IR) designating OAPI.

As the OAPI registry is still primarily paper-based, there are onerous requirements: for example, six sets of the statement of opposition or claim to ownership pleadings must be filed for each member of the OAPI Commission Tribunal. The composition of the Tribunal varies and, as a result, there is no precedent system, and the outcome of decisions can vary. Appeals or partial appeals are, however, possible to the Appeal Board which functions effectively, and generally delivers good rulings.

Significant positive changes to the Bangui Agreements are in the offing, which will, for example, allow for more substantive examination, as well as the opposition term taking place at the application stage, rather than at registration.

The African Regional Intellectual Property Organisation

The African Regional Intellectual Property Organisation (ARIPO) has four working protocols, one of which is the Banjul Protocol, providing for the registration of trademarks. ARIPO currently has 20 member states, with the Republic of Seychelles officially joining on January 1, 2022. So far, 12 countries have acceded to the Banjul Protocol. Unlike OAPI, applicants in ARIPO have a choice of these 12 countries, which can be individually designated.

”Hijacking well-known marks is very common in Africa, which makes an effective watching service an essential part of any strategy.”

Botswana, Malawi, Namibia, Mozambique, and Zimbabwe have enacted appropriate national legislation to give force and effect to ARIPO registrations. It is very important for brand owners to be aware of this, as it could impact on the enforceability of their ARIPO registrations.

The ARIPO trademark register is maintained at the ARIPO registry in Harare, Zimbabwe. The registry is extremely competent and strives to update and improve its laws. ARIPO earns its “good” badge as it is continuously engaging with its stakeholders via the ARIPO Working Group. Unfortunately, its records are not yet digitally linked to the national registers of all member countries (where applicable), which would ensure that ARIPO designations are immediately reflected on the registers of member countries. This can create difficulties in practice.

In addition, many ARIPO member countries have difficulty in complying with the strict nine-month deadline within which to examine trademark applications. Accordingly, there is a risk that the ARIPO registry may consider the mark to be accepted when, in fact, the mark has not yet been examined at national level. This may impact on the enforceability of the ARIPO registration.

The ARIPO opposition period is three months, but the opposition terms of the member countries have not all been harmonised. In practice, we advise brand owners to file the notice of opposition both centrally through the ARIPO registry and at the relevant member states’ registries—especially where the opposition term in a member state is shorter (as in Ghana, Kenya, Malawi, Mozambique, Namibia, Tanzania, Zambia and Zimbabwe). Fortunately, it is possible to obtain extensions in most of these member states.

As the national laws of member states have remained in force, cancellations and infringements are instituted in accordance with the national laws of ARIPO member countries.

Madrid Protocol

Despite 22 African countries having acceded to the Madrid Protocol, only 11 have domesticated the Protocol through appropriate national legislative amendments, to give full force and effect to IRs. However, only four countries (Kenya, Morocco, Mozambique, and Tunisia) are, in our experience, capable of consistently and routinely examining and publishing marks within the World Intellectual Property Organization’s (WIPO) strict 12- or 18-month period, within which objections should be noted.

We have encountered many examples of IRs being examined outside WIPO’s timelines and being rejected nationally, while the Madrid Monitor reflects the mark as registered, leaving the owner without enforceable statutory rights. Unfortunately, this is often realised much later. It is, therefore, important to verify the status of the IR locally.

To effectively apply agreements such as the Madrid Protocol, additional directions, procedures, and mechanisms need to be put in place at a national level to ensure that the IP office is equipped to deal with and process IRs. It is essential that enabling regulations are promulgated to address practical issues. There is often a lag in the enabling regulations being published, as is currently the case in Malawi. In many instances, it is advisable to file oppositions before the 12- or 18-month period expires, to ensure that the registry notifies WIPO.

If the national laws of common law countries do not clearly recognise that IRs have the same force and effect as national registrations, IRs may not be enforceable or enjoy the same protection as national registrations.

Well-known or famous marks

Hijacking well-known marks is very common in Africa, which makes an effective watching service an essential part of any strategy. In Nigeria, it has become commonplace for entities to apply to register well-known trademarks, but only to prosecute those applications to the point of issuance of a notice of acceptance. It seems that those applicants (often counterfeiters) subsequently rely on that notice to convince customs officials that they own a trademark registration.

”Although no express provision is made for the protection of well-known marks in Angolan IP law, well-known marks are, in fact, afforded some protection.”

A further complication for the true brand owner is that its later applications are inevitably blocked due to the applicant’s failure to prosecute or withdraw the earlier application. The earlier application may remain on the register for years, as the counterfeiter has no incentive to prosecute and be faced with an opposition.

Regrettably, there is no simple mechanism to remove the earlier application and the only option for the brand owner is to approach the High Court in Nigeria for relief. This entails costly, and often drawn-out litigation, all simply to remove an earlier trademark application and impediment to the registration of the true brand owner’s trademark. Therefore, brand owners must be aware that it is essential in a major economy such as Nigeria to file trademark applications as soon as possible to avoid this complication.

As already mentioned, a similar situation has reared its “ugly” head in Morocco. Trademark squatters have started to favour this jurisdiction, seeking registration of some of well-known (and minor) animation character marks of film studios. If the character marks are not yet registered prior to the opposition, it makes High Court proceedings inevitable.

Although no express provision is made for the protection of well-known marks in Angolan IP law, the “good” news is that well-known marks are, in fact, afforded some protection. In practice, the registrar will refuse or annul a trademark if it constitutes a reproduction, imitation or translation of a mark that is well-known in Angola—if it is used for identical or similar goods or services and may cause confusion.

A mark may also be refused or annulled where it constitutes a reproduction, imitation or translation of another mark that enjoys high renown in Angola, and the use of that mark is intended to take unfair advantage of, or may be detrimental to, the distinctive character or renown of the original mark.

Brand owners of well-known foreign marks may only oppose a mark if they have registered or applied to register their own trademark in Angola. Fortunately, this option exists even if the brand owner’s application is filed after it decides to oppose the third party’s application. Brand owners of famous marks must bear in mind that the threshold for proving that a mark is well-known is quite high in many African countries, and it can be a costly exercise to prove such renown.

As an additional option in a trademark strategy, it is possible to file defensive trademark applications in a few African countries, such as Kenya, Nigeria, Seychelles, Uganda, Zambia and Zimbabwe. Through this mechanism, the brand owner of a foreign mark can obtain protection, even for goods or services for which it does not intend to use its mark. This should be used as part of an overall strategy in Africa, especially in the light of the ever-growing trade in counterfeit goods.

Patents and designs

The considerations for patent and design owners looking to implement an IP strategy in Africa with specific reference to the two regional organisations (ARIPO and OAPI) are not completely dissimilar from the considerations mentioned in respect of trademarks above, but the classification of “the good, the bad and the ugly” does differ somewhat.

”Currently, 18 of ARIPO’s member states are signatories to the Harare Protocol, but this will become 19 in 2022.”

Without hesitation, the standout performance—and deserving recipient of the “good” badge on the patent front—is the efficiency, predictability and cost-effectiveness of the ARIPO system for patents, designs and utility models. The Harare Protocol, which regulates patent, design and utility model matters in ARIPO is one of four working protocols and by far the most successful in terms of performance. Currently, 18 of ARIPO’s member states are signatories to the Harare Protocol, but this will soon become 19 when the Republic of Seychelles becomes a member in 2022.

This effectively means that from January 1, 2022, it will be possible to obtain patent, design, or utility model protection in a total of 19 countries by filing a single application at the ARIPO patent office. The official fees payable at ARIPO are reasonable, and the cost and administrative benefits of the ARIPO system as a viable option for obtaining significant patent coverage should not be underestimated.

While there are concerns about the enforceability of trademarks obtained in some ARIPO member states when using the Banjul Protocol, the same is not true for patents obtained via ARIPO and the Harare Protocol. Almost all members of the Harare Protocol have domesticated their obligations into their national laws and, where this has not taken place, the member states have provisions in their national legislation which give effect to their obligations under international treaties. This would include their obligations as members of ARIPO.

Unlike OAPI, where it is not possible to file nationally in the member states themselves, it is possible in ARIPO countries to elect to file nationally in the member states individually or via ARIPO. It is important to consider the benefits of national versus regional filing. In certain (very) limited circumstances, it may be advisable to seek national protection rather than a regional filing via ARIPO.

Such circumstances typically involve cases where there is only a single country of particular interest to the applicant or where the national system works well, and patent protection can be obtained quicker or at a lower overall cost. The benefits of filing via ARIPO for designs are particularly underrated by potential applicants, as is shown by the relatively few design applications filed at ARIPO annually (Figure 1).

Figure 1: Number of design applications filed at ARIPO

The reasons for the low number of design applications being filed at ARIPO annually are not clear. It can only be speculated that the number may be due to the lack of information relating to the enforceability of design protection under the Harare Protocol. This Protocol is extremely effective, as it is possible to obtain design registration in 18 countries (soon to be 19) with a single application in under 12 months. An ARIPO design application for a novel label, container, etc, can provide applicants with speedy and enforceable protection in countries where trademark prosecution may be slow.

Although ARIPO’s procedures are generally “good”, we have experienced similar challenges to those faced when grappling with the application of the Madrid Protocol. For instance, it currently does not have satisfactory procedures in place to manage communications with member states. It relies on an internal file transfer system that can result in delays in the transmission of important time-sensitive communications between itself and member states.

In addition, the fact that individual member states can reject an application after it has been examined and accepted by ARIPO, and the lack of proper procedures to deal with this peculiarity (although not a regular occurrence), is problematic.

Once again, however, ARIPO earns a “good” badge, as it is always willing to engage with its stakeholders via the ARIPO Working Group. Fortunately, these and other problem areas across the various Protocols have been discussed, and amendments to the ARIPO Protocols are tabled annually to improve their functionality and their ability to cater for the needs of their users. Although patent and design applications may be filed regionally at ARIPO or OAPI, the enforcement of such rights would take place at a national level.

Although IP proprietors actively enforce their trademark rights and copyright in most countries on the continent, there has been very little in the way of patent or design litigation. On a positive note, IP jurisprudence in Africa is maturing, and IP tribunals and high courts in countries such as Kenya and Uganda (both ARIPO member states) have recently passed judgments relating to the enforcement of industrial designs.

”In another positive development (in 2020), the Kenyan High Court confirmed the jurisdiction and capability of the Kenyan Industrial Property Tribunal.”

Earlier this year, in the case of Migoo Industrial & Trading Company v Rida International Industry, the Ugandan High Court issued a decision on the infringement of industrial design rights in favour of a design proprietor against a third party for infringement of a registered design.

In another positive development (in 2020), the Kenyan High Court confirmed the jurisdiction and capability of the Kenyan Industrial Property Tribunal (KIPT) in adjudicating matters relating to the enforcement of industrial design rights under the Kenyan Industrial Property Act (IPA). In the Tongda International Hotel decision (Civil Case E198 of 2020), the High Court confirmed that KIPT has the power to grant (in accordance with provisions in the IPA), at the request of the owner of the patent or registered utility model or industrial design, an injunction to prevent infringement where infringement is imminent or to restrain the infringement, damages or any other remedy provided for in law.

As a result, these matters must be heard by the KIPT, and the decisions appealed to the High Court, which confirmed the capability of the KIPT by referring to previous precedent-setting decisions passed by the KIPT. Based on this judgment, it is important for patent and design owners to appreciate that the High Court cannot be approached as a court of first instance and that the judiciary in Kenya has confidence in the KIPT. The above case illustrates that while patent and design cases are often few and far between, systems are in place and enforcement capabilities do exist at national level.

Concluding remarks

In summary, the growing economic importance of the continent and the advent of AfCFTA, coupled with the “good, bad, and sometimes ugly” nature of the continent’s IP protection and enforcement regimes, has made the review and implementation of a tailor-made IP strategy for Africa a necessity.

Mariëtte du Plessis is a senior partner in the trademark department at Adams & Adams. She can be contacted at: mariette.duplessis@adams.africa

Simon Brown is a senior partner in the trademark department at Adams & Adams. He can be contacted at: simon.brown@adams.africa

Nicky Garnett is a partner in the patent department and the head of Africa patents. She can be contacted at: nicky.garnett@adams.africa

Nthabiseng Phaswana is a partner in the patent department. She can be contacted at: nthabi.phaswana@adams.africa

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