South Africa: Trade Marks - A Gateway To African Trade

Last Updated: 27 November 2013
Article by Christophe van Zyl

According to a recent report,1the population in Sub-Saharan Africa, which currently stands at approximately 1.1 billion, could double by the year 2050. Due to its growing population, the Sub-Saharan region poses huge opportunities for new investments and for the sale of goods to a growing consumer base.

In addition to its growing population, Sub-Saharan Africa's growth prospects, when compared to ten or fifteen years ago, are optimistic. Whilst large economies in the developed world are seeing growth figures ranging from slightly in the negative to under three percent, many populous countries in Sub-Saharan Africa are seeing growth of over 5%. For example, in the second quarter in 2013, Nigeria was reported to have recorded 6.18% growth. 2

Taking into account that many countries in Sub-Saharan Africa have only recently started showing significant economic growth, the current population and economic growth forecasts mean that:-

  1. there are, right now, potentially a billion consumers in Sub-Saharan Africa; and
  2. that number is set to double in the next 35 years.

Against this background, it is important for businesses that see potential in Sub-Saharan Africa to protect their brands by obtaining trade mark rights. The failure to seek protection of rights in Sub-Saharan Africa could result in a number of consequences, such as those mentioned below.

1.Somebody else could get there first

Trade marks rights are generally territorial in nature. Another person could secure registered rights in a trade mark that is the same as or "confusingly similar" to the name of an overseas product that is not yet available in a particular Sub-Saharan country. A possible consequence of somebody else obtaining registration of an overseas business' trade mark in a Sub-Saharan country is that the rights of the local trade mark owner may be infringed when the overseas based product is launched in the Sub-Saharan country. It is a tedious and costly exercise to re-brand goods that are destined for a foreign market simply because another person owns the rights and such obstacles could be avoided by obtaining protection in Sub-Saharan African countries early on.

In few instances, the names of foreign products that are well-known in a particular African country may be protected by trade mark laws that protect so-called internationally "well-known" trade marks. However, very few trade marks would meet the criteria to qualify as a "well-known" trade mark.

For businesses that already trade in a Sub-Saharan African country without having obtained trade mark protection, a possible consequence of not securing trade mark rights is that a local distributor could register a trade mark behind an overseas supplier's back (this happens quite often). In those instances, a business' trade could be disrupted.

Although there is a right of recourse in many countries to cancel a trade mark that is registered in bad faith, it is a costly and tedious process to litigate to cancel a trade mark. Such difficulties could be avoided by being prudent and filing a trade mark application before appointing a local business partner as an importer or distributor.

2.Counterfeiters may flood the market

Sub-Saharan Africa is a known dumping ground for cheap and often dangerous counterfeit products. Consumers are often looking for the best deal and are not necessarily educated about the existence and risks of buying a counterfeit product.

Especially in respect of pharmaceuticals and consumer goods, failing to register a brand name as a trade mark could result in counterfeiters dominating the market.

Without a trade mark registration, it is very difficult to ask authorities for assistance to combat counterfeit goods as a trade mark registration in most instances is a basic requirement to be protected by anti-counterfeiting laws. Although much still needs to be done by authorities in many Sub-Saharan Africa to combat counterfeiters, there is an increasing awareness of the problem by many governments. For example, Customs recording systems where trade mark owners can ask Customs to keep a check of goods coming into a country that bear a registered trade mark are becoming more prevalent.

3.Rights may become diluted

Like everywhere else in the world, it is important in Sub-Saharan Africa to establish exclusivity in a particular brand name by ensuring that other products with confusingly similar names are not allowed to become established in the market.

In terms of most Sub-Saharan countries laws, the owner of a registered trade mark is entitled to take action to prevent others from using confusingly similar marks in the course of trade in relation to the same or similar goods covered by the registered trade mark, provided that confusion and deception is likely to occur. In addition, if a trade mark is registered, a business' trade mark attorney can keep a watch for similar marks that are filed by others and there is a procedure in most countries to oppose the registration of marks that are identical or confusingly similar to a registered trade mark.

Failing to file for protection early could result in the market becoming cluttered with confusingly similar brand names. When a brand loses its exclusivity, it loses its effectiveness as a marketing tool.

Where to file first?

As you can see, there are several benefits to obtaining trade mark protection in Sub-Saharan Africa. There are several countries in Sub-Saharan Africa and the question arises where to file first? In our opinion, it would make sense to obtain protection in the largest economies over and above South Africa, however, each business' strategies would need to be considered carefully.


It is possible to obtain a single trade mark registration that extends to the 17 member states of OAPI (Organisation Africaine de la Propriété Intellectuelle). A number of Africa's large economies are members of OAPI and filing an application in OAPI is a good starting point to increasing trade mark protection in Sub-Saharan Africa.

The OAPI system is efficient and obtaining an OAPI registration extends to the countries Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Togo and Comoros.


Another country that warrants consideration as a starting point to increasing trade mark protection in Sub-Saharan Africa is Nigeria. 20 years ago, the Nigerian economy was 7.5 times smaller than South Africa's economy, whereas it was only 1.4 times smaller at the end of 2012.3 With 170 million people, Nigeria is the second most populous country in Africa and its economic growth and population make it arguably the most vital country outside of South Africa to obtain trade mark protection. The Trade Marks Office in Nigeria currently is modernising Nigeria's trade mark filing system to make it easier for investors to secure rights in that country.

Other Important Countries

Of course, OAPI and Nigeria are simply examples of jurisdictions where obtaining protection is important and each business' trading objectives in the medium to long term must be considered as part of a brand strategy for Sub-Saharan Africa. For example, the largest economies in Sub-Saharan Africa are reported to be4:-

  1. Nigeria;
  2. Ethiopia;
  3. Ghana;
  4. Kenya;
  5. Tanzania
  6. Uganda;
  7. Cameroon (OAPI);
  8. Cote d' Ivore (OAPI);
  9. Botswana;
  10. Equatorial Guinea(OAPI);
  11. DRC;
  12. Gabon (OAPI);
  13. Senegal (OAPI);
  14. Mozambique; and
  15. Burkina Faso(OAPI).

Although not in the top 15 in terms of size, Angola, Mozambique and Burundi are worth mentioning as countries that are showing significant growth and where obtaining trade mark protection could reap rewards in terms of gaining access to those markets.

In summary every business, from large multinationals to smaller businesses that anticipate doing business in Sub-Saharan Africa, should seriously consider obtaining trade mark protection in all, if not the most economically significant, Sub-Saharan African countries. Failing to do so could result in opportunities being lost. Many businesses that were slow to obtain trade mark rights in South East Asia found it more difficult to expand into those markets later on and the same mistakes should not be repeated when it comes to Africa.






The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.