Pharma trademarks in Angola: the right dose of protection

It is important to state what a “pharmaceutical trademark” is. When I use the term, I do not intend to mean or create a new legal type of trademark. Nor do I refer directly to class 5 of the Nice Classification since it covers more than pharmaceutical products, such as “diapers for babies”. I use the term only for academic purposes, to identify trademarks where protection is given to drugs and medications and where the legal approach and solutions may be distinct from those of other products.

Africa is a continent of big opportunities, especially for pharmaceutical companies. According to the latest statistical data, the market for the pharmaceutical industry in Africa will be worth about €60 billion ($75 billion) by 2020. In this sense, a big investment in protecting pharmaceutical trademarks in Africa is predicted, and Angola is not an exception in this matter.

Angola is one of the biggest economies in Africa. The oil crisis had a major impact on the economy but it also created an opportunity to widen the narrow base of the economy to a more diversified one, and the pharma industry is a beneficiary.

As stated by the Angolan minister of health at the end of 2016, one of the objectives of the Angolan government is to develop an Angolan pharmaceutical industry capable of increasing the availability of drugs to the population, thus reducing the number of imports and increasing state revenues.

Despite this being a good opportunity for the pharmaceutical industry, stakeholders must be aware of the difficulties they might face. The Angolan IP landscape has its own specific characteristics and I will point out some specific questions on pharmaceutical trademarks in this country.

It is worth analysing three specific problems that may affect the pharmaceutical industry: (i) the difficulties in enforcing trademark rights; (ii) the struggle against confusion; and (iii) the problem of parallel imports.

Enforcement challenges

The difficulties in enforcing trademark rights in Angola, and IP rights in general, lie first with the backlog that exists in the Angolan patent and trademark office (IAPI). Despite major improvements in recent years, it still takes a long time to obtain a trademark registration certificate. Since the trademark filing gives only provisional protection, the application filing receipt is not accepted as a sufficient legal title to seize counterfeit products before customs, or as a ground to enforce trademark rights before a court, especially if the objective is to obtain an interlocutory injunction.

One of the remedies is to resort to arbitration. As a form of alternative dispute resolution, arbitration is a way to resolve disputes outside the courts and, due to its idiosyncrasies, has a special role to play in IP rights. Since Angola became the 157th contracting state to the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, which entered into force on June 4, 2017, arbitration is now a viable choice for solving trademark disputes, even when the litigation involves foreign companies.