Protecting and enforcing trade mark rights across Africa

14th Feb 2024

With fast-growing cities and a developing international trade presence, Africa has an exciting IP landscape – what do UK trade mark professionals need to know about this amazing continent?

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We take a closer look at trade mark issues in Kenya, South Africa and Zambia, along with the continent as a whole.

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Trade marks - procedural matters

Trade mark searching

In Africa, trade mark searching can be tricky.  In certain countries, the registry does the search. Burundi, the Democratic Republic of Congo (DRC) and Sierra Leone still have manual records, such as index cards. In Ghana, Nigeria, Sudan, Tanzania and Zimbabwe there are electronic records, but these are not always accurate, and an electronic search may need to be supplemented with a manual search. In Nigeria and Tanzania, access to the electronic database is restricted.

As for international registrations (IRs), these are not always reflected in the records of the designated countries. Ghana and Sierra Leone both belong to the Madrid Protocol, yet IRs designating these countries do not appear in the national databases. 

There can be considerable delays between filing and publication – 24 months is not uncommon.

This can make relying on published applications risky. Particularly in Ethiopia, Gambia, Ghana, Libya, Malawi, Nigeria, OAPI, Sierra Leone, Sudan, Tanzania, Uganda, Zambia and Zimbabwe.

It’s highly advisable to conduct searches in Angola, Libya, Madagascar and Sudan. In Uganda pre-filing searching is compulsory.

Trade mark registration

In some countries there are considerable delays between filing and registration. Files can go missing.

Important considerations with registration

There is much to consider:

• Classification - broad specifications are not accepted in Liberia, Libya, Madagascar and Morocco. In Madagascar, strict adherence to the goods and services listed in WIPO’s Madrid Goods & Services Manager is required. In Libya, goods like alcohol and pork are not accepted.
• Translation into local languages is required in Algeria, Angola, Burundi, Cape Verde, Djibouti, DRC, Libya, Madagascar, Mozambique, Morocco, São Tomé e Príncipe and Tunisia.
• Notarisation is required in Angola, Cape Verde, Djibouti, Egypt, Ethiopia, Liberia, Libya, Madagascar, Mauritius, Mozambique, Rwanda, São Tomé e Príncipe, Seychelles and Sudan.
• Association is required in South Africa, Tanzania, Malawi and Zambia.
• Appeals can be slow and expensive in Egypt, Ethiopia and Madagascar.

Examination

Examination standards vary considerably. It is not uncommon for a country to have both competent and incompetent examiners. Examination standards do sometimes improve, with Ethiopia being an example of a country that has upped its game.

Regional registrations 

A peculiarity of trade mark protection in Africa is that there are two regional registration systems.

ARIPO (African Regional Intellectual Property Organisation)

The Banjul Protocol governs the ARIPO registration system for trade marks, and the following 13 countries belong to this system:

Botswana, Cape Verde, Eswatini, Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé e Príncipe, Tanzania, Uganda and Zimbabwe.

The ARIPO system is a designation system, with the applicant designating the countries where it requires protection.

OAPI (Organisation Africaine de la Propriété Intellectuelle)

OAPI is a regional system that covers the 17 countries listed below. Here there is no country designation – a registration automatically covers all member countries. There is examination on absolute grounds, but not for prior rights. Use in any one OAPI country is sufficient to maintain the registration. The members are:

Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo. 

International registrations (IRs)

At present, 24 African countries are party to the Madrid Protocol. But there are issues with IRs in Africa and it is important to note the following:

• IRs are valid and effective in Algeria, Cape Verde, Egypt, Madagascar, Mauritius, Morocco, Mozambique, Rwanda and Sudan.
• IRs are vulnerable to challenge in Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Namibia, São Tomé e Príncipe, Tunisia and Zimbabwe.
• IRs are neither valid nor effective in Eswatini, Lesotho, OAPI, Sierra Leone and Zambia.

Trade mark registration - key considerations

In Africa, a continent where trade mark piracy is rife, trade mark registration is essential, especially as most courts in Africa have little experience of IP.

This means that cases based on grounds like passing off, unlawful competition or well-known marks are more challenging.

If you are a trade mark owner it is important to develop a robust trade mark strategy. Be aware that there is no fast-tracking of trade mark applications.

Leave sufficient lead-in time in both first-to-file and first-to-use jurisdictions. Prioritise core trade marks. If a registration is vulnerable to a non-use attack, file a fresh application.

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A look at three countries

Below, we take a look at trade mark issues in three African countries in some detail – Kenya, South Africa and Zambia.

Kenya

What makes Kenya very interesting is that it has specific anti-counterfeiting legislation and an anti-counterfeiting body.

There is an Anti-Counterfeit Act and an Anti-Counterfeit Authority (ACA);  a trade mark owner can lodge a counterfeiting complaint with the ACA.

Dual registration

Kenya has a dual registration system - besides trade mark registrations, there is a separate system of recording IP rights with the ACA.  Brand owners are required by law to separately record with the ACA any trade marks that are applied to goods that enter Kenya.

When it comes to an ACA recordal, significant detail is required.

A failure to record is an offence, and the recordal needs to be renewed annually.

Taking legal advice can be a crucial step for foreign companies doing business in Kenya.

South Africa

South African trade mark law follows British and European trade mark law closely, so it is generally…

Up to speed

There is a considerable amount of trade mark litigation in South Africa, and a number of cases make their way up to the Supreme Court of Appeal (SCA).  In a recent case, National Brands, Limited v Cape Cookies CC, the SCA held that the trade mark dilution provisions are not confined to enquiries related to non-similar goods or services, and can be relied on in matters involving marks used in relation to the same or similar goods or services.

Closely watched

There is considerable public interest in IP-related issues in South Africa. The recent registration of Karoo Lamb as a GI was widely publicised and applauded. But many South Africans have vigorously opposed plans to amend copyright law through the adoption of US-style fair-use provisions.  

Zambia

Zambia has passed the Trade Marks Bill 2023 in order to modernise the Trade Marks Act (Chapter 401) 1958. It is not yet clear when the new legislation will come into effect, but here are some of the more important changes.

• Provision for service marks;
• Provision for protection of non-traditional marks like sounds, smells, and shapes;
• Recognition of well-known marks;
• Provision for multi-class applications;
• Opposition proceedings;
• Enforcement and border control measures;
• Recognition of the Madrid Protocol.

Key takeaways

These are some of the lessons to be learned from this article:

• Register your trade marks.
• Beware of the pitfalls of regional and international systems.
• Take account of local laws and systems, and general circumstances.
• Record licences – this is particularly important from a non-use perspective.
• File customs watches or surveillance requests where possible, and conduct brand identification training for government officials.

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The authors recently presented a webinar entitled protecting and enforcing trade mark rights across Africa – click here to watch it on demand.

 

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