The recent US-Africa Business Forum - an event that was attended by major US corporations including Ford, GE, Morgan Stanley and Coca Cola - has created a certain amount of optimism. The South African publication, Moneyweb, wrote an article on the event entitled 'US Must Take More Interest in Africa'. It quoted African Union Commission Chair, Nkosana Dlamini-Zuma, who suggested that Africa was both open to investment and flexible: 'Africa is wanting to transform its economies so we need to change the structures of our economies'. But she also warned US companies not to tarry: 'If they don't come to the party eventually the party will happen without them.'

The UK newspaper, The Independent, took a similar line in an article entitled 'US is waking up to the potential of Africa, after years of leaving it to the Europeans and Chinese.' It made the point that the USA has slipped behind both China and the EU in terms of African trade, with US trade with Africa in 2013 being roughly half of China's US$120 billion. But it suggested that, as a result of the forum, American companies will show a far greater interest in Africa in future. In fact, the forum was 'the week when America finally woke up to the true potential of trade with Africa, the continent with some of the world's fastest growing economies.'

The Independent went on to make the point that Africa – a continent with the youngest population in the world, and some 1.1 billion people in total - has the fastest growing middle class. People who 'will soon want the consumer goods and services that American companies can provide.' The continent also has huge natural resources, but the future will no longer simply be about extraction: 'Investors in Africa need to concentrate on developing the potential of its human resources as much as extracting its natural it technology transfer, call it what you want – but the reward for Africa needs to be more than the billions of dollars paid by international companies for access to resources that may or may not trickle down to the people who actually do the work.'

US companies who start showing an interest in Africa will clearly want to protect their trade marks. So what will they find? They'll find that protecting trade marks in a continent of 54 different countries is complex, especially if you bear in mind that many African countries have an English law background, as many have a French law background, and a handful have a Portuguese law background. They'll find that, when it comes to trade mark registration, a number of possibilities exist:

  1. National registrations are available in all the countries, other than those that belong to OAPI (see below).
  1. There are two different regional registrations, namely:
  • The OAPI registration, which is a single registration that covers all of the member countries, making it similar to the CTM system in the EU (except that there's no option of national registrations). The member countries, which are generally French-speaking, are: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
  • The ARIPO registration, which is a designation system that's a bit like the International Registration system. A trade mark owner can designate some or all of the following English-speaking countries in an ARIPO registration: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, United Republic of Tanzania (Tanganyika and Zanzibar) and Zimbabwe.
  1. International registrations are available in the following African countries: Algeria, Botswana, Egypt, Kenya, Ghana, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia and Zambia. We understand that International registrations designating Algeria, Botswana, Kenya, Madagascar and Mozambique are recognised as valid and enforceable.

There's even talk of OAPI joining the International Registration system in the same way that the CTM system is part of the International Registration system. If and when this happens, US companies will be able to cover all the OAPI member countries by way of a single designation to an International Registration.

US companies heading for Africa will discover other things too! They'll find out that there are, in fact, concerns about the validity and enforceability of ARIPO registrations in certain member countries – these concerns are based on the fact that certain member countries have never incorporated the ARIPO agreement into their national laws. At this stage, we understand that only Botswana and Zimbabwe, and possibly Lesotho, have incorporated the Protocol into their national legislation. They'll find out that there are similar concerns about the validity and enforceability of International Registrations in certain countries. They'll find that in certain countries it is not possible to file trade mark applications in services classes. They'll notice that International registrations have been registered designating African countries where such registration is not recognised and enforceable. The trade mark will reflect as registered on the Trade Mark's register and in most instances the entity seeking registration will have to incur the costs to have the trade mark removed / cancelled from the Trade Mark's register. Not an ideal situation. They'll notice that South Africa and Nigeria – Africa's two largest economies – don't belong to either of the regional registration systems, or the International Registration system. For these reasons, national registrations still play a major role in Africa.

Of all the countries in Africa, South Africa has the most jurisprudence and the greatest expertise in the area of trade marks. It is for this reason that many foreign trade mark owners choose to use South African firms – some of whom have strong links and even formal alliances with firms throughout the rest of Africa – for a centralized, one-stop African trade mark registration service.

Original Publication date: 10 September 2014

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