Protection and Enforcement in Africa

21-05-2017

Ed Conlon and Sarah Morgan

Protection and Enforcement in Africa

Ilbusca / iStockphoto.com

There is much to discuss on the topic of IP in Africa, from design enforcement and the Madrid System controversy to the .africa gTLD. Ed Conlon and Sarah Morgan find out more.

For 170 years, textile manufacturer Vlisco has been “romancing the men and women of Central and West Africa” and is embraced as “the very fabric of life in many societies,” according to its website.

Accompanying this text is a picture of seven African women all wearing traditional dresses in different styles and colors, with two windmills in the background. Despite its base in the Netherlands, Vlisco specializes in designing and producing fabrics for a host of African countries, saying its fabric is “seen by many as African.”

The company will be represented on a panel discussion tomorrow at 3:30 pm by Monique Gieskes, Regional Director DRC Cluster of the Vlisco Group. The session—RM50  Regional Update: Protection and Enforcement Strategies in Africa—will also hear from Godfrey Budeli (Adams & Adams, South Africa); Vanessa Ferguson (Kisch IP, South Africa); and Darren Olivier (Adams & Adams, South Africa).

Mr. Olivier says the discussion will blend fashion and IP in order to review some of the pitfalls facing trademark and design owners operating in Africa. It will look at registration strategies on a continent that provides many opportunities, not least because “there are a billion-plus people and a growing middle class who have an affinity for brands, not just in fashion.”

Africa’s IP system is fragmented to some degree; sitting alongside national laws and regimes are two distinct IP jurisdictions: the African Regional Intellectual Property Organization (ARIPO) and the Organisation Africaine de la Propriété Intellectuelle (OAPI), although they do sometimes work together. With 19 member states, ARIPO typically represents English-speaking nations, while the mother tongue of OAPI’s 17 members is often French. Together they represent around two-thirds of the countries in the African Union.

Across Africa, design enforcement has been neglected, says Mr. Olivier, in part because of the lack of education around it. He stresses that companies have been “missing a trick” and they should be using the system more, based on a number of decisions illustrating that design enforcement is “alive and well and is a strategy that one should consider.”

He will provide examples in the panel session, but notes that the most active country in design enforcement is Kenya.

Adding Egypt, Nigeria, OAPI, Rwanda, and South Africa to the list, he says “there are court decisions to be found in these countries and mostly, they are pretty good.” On the other hand, Angola, for example, can be “tricky and take a long time, and in some countries there has never been a decision.”

Mr. Olivier says there are significant differences in design legislation across the continent, with these differences typically stemming from each country’s Western heritage. This means, for example, that the English-speaking countries’ laws have more in common with those of the United Kingdom. In addition, there can be a 10 to 20-year lag between the adoption of laws in Europe and implementation in the nations that follow European law.

Mr. Olivier wants to “debunk” designs, as they are “not a tricky thing,” and believes education is important for achieving this.

“Because very few registries do novelty checks (which can cause delays), it can be easy to quickly protect market share via a design as opposed to, for example, a trademark or other forms of IP protection which take longer to obtain. Even if the lack of a novelty check may clutter the registers with weak designs, the advantage to the public is the availability of a quick, low-cost form of protection,” he explains.

However, despite some positive instances of design enforcement, companies should not approach design enforcement as they would in Europe, where there is growing case law and a history of legislation to aid the enforcer and defendant. “Generally speaking, the lack of jurisprudence in Africa means that it’s hard to predict the outcome of decisions,” he says.

Mr. Olivier will also speak to a number of trademark decisions across the continent in an effort to persuade investors that brands are protectable.

Using the Madrid System

One of the main trademark enforcement lessons is to have the “proper tools,” says Ms. Ferguson.

“During the session I will focus on the Madrid System in Africa as a tool to ensure proper enforcement. I will outline the summary of Madrid and what it offers Africa, and then look at Africa’s national and regional systems.”

A single registration covering multiple jurisdictions is definitely attractive to brand holders seeking to protect their rights in Africa. Madrid does indeed have a place in Africa, Ms. Ferguson argues, “but the big question is where the Madrid System works and where it doesn’t.”

Madrid is currently available in 37 of the 54 African countries.

“During the session, I will be looking at three main categories: countries where Madrid is implemented and functioning; countries where it’s uncertain whether it’s fully functional or there are questions over enforceability issues; and why there are some countries that have not as yet implemented Madrid,” she explains.

Madrid is functioning and works well in some African countries, for example in Botswana, Kenya, Egypt, Mozambique, and Madagascar, Ms. Ferguson says.

South Africa, Ms. Ferguson’s home country, is one of 17 nations which have not as yet implemented the Madrid System, although this is on the cards. During the session she will be focusing on some of the factors affecting the implementation and functioning of Madrid in Africa.

Ms. Ferguson goes on to say that OAPI’s accession is “quite a controversial area” since the organization joined in March 2015.

There are broadly two strands to this controversy, the first being that there are concerns about the competence of the Administrative Council in enforcing the international system, she says.

“The other view is that sovereign states should be acceding to Madrid, not OAPI. There has been a lot of talk from the opposing movements and we will have both sides in the audience. There seems to be a murmuring that a court decision will be needed for clarification.”

As well as providing practical tips on when a party should use the Madrid System, when a national trademark is more advantageous, and when the two systems suit specific brands, Ms. Ferguson will review the African countries that have not implemented the system. She will assess the steps being taken to change this and how the World Intellectual Property Organization is “looking at ensuring there is a place for Madrid in Africa, which it definitely should have,” she concludes.

Developing .africa

While the session will not be reviewing the .africa generic top-level domain (gTLD) per se, the launch of this new web address and the opportunities it provides for brand owners should not be forgotten.

After five years of legal obstacles, including a dispute brought by DotConnectAfrica Trust, the Internet Corporation for Assigned Names and Numbers delegated the management of the .africa gTLD to Registry Africa, a wholly-owned subsidiary of South-Africa based ZA Central Registry (ZACR).

In April, the .africa domain launched its sunrise phase, allowing IP owners to apply for domain names matching their trademarks. Once this period closes on June 2, the landrush phase will follow and anyone will be able to apply for premium .africa domain names.

During the landrush period, which ends on June 30, there will be four phases, each of which will last seven days, with five days for applications and two days for delegations and auction.

Next comes the general availability period, which will begin on July 4, when the public will be able to apply for .africa domain names.

Because the domain is still in the early stages of launch, its difficult to say what impact .africa will have on the wider economy, according to Alison Simpson, Product Manager for Domain Management at MarkMonitor.

Ms. Simpson believes this will be one of the more complex launches because of the phases in the landrush period, but that this will not necessarily restrict interest in the gTLD.

Africa-based owners will take priority during the sunrise phase, with the registry placing a “special emphasis” on securing the rights of IP owners, Internet users, and the broader African community during this period, according to ZACR.

As African trademarks take priority, brand owners may decide to submit an African trademark now to the Trademark Clearinghouse in order to ensure they are higher up the list in terms of priority, Ms. Simpson suggests.

We havent seen this happen yet but it does bring up the question of whether brand owners will change strategies,” she explains.

Overall, a gTLD represents a real opportunity to expand a brands global presence online.

“If a brand owner is actively doing business in the country or has a presence there, they should definitely consider securing their domain,” advises Ms. Simpson.

While Vlisco continues to romance the men and women of Africa, will trademark owners be similarly lovestruck with the .africa domain? Only time will tell. 

.africa gTLD, Madrid System, Africa’s IP system, trademark enforcement

WIPR