South Africa: Trade Marks Come To (And From) Africa

Last Updated: 10 August 2016
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2018

The decision by the International Trademark Association ("INTA") to host a major meeting in Cape Town – apparently the first INTA conference to take place on African soil – is highly significant. It certainly says a great deal about the continent's growing economic importance.

The conference takes place on 1 – 2 September 2016 and it's entitled "Building Africa with Brands". The keynote speaker will be Robbie Brozin, co-founder of the highly successful Nando's fast food chain, a business that started in South Africa and then conquered other parts of the world, most notably the UK. The conference will also feature speakers from major multinational companies, including SABMiller and Philip Morris, branding organisations such as Interbrand, and intellectual property ("IP") law bodies such as the World Intellectual Property Organization ("WIPO").

Africa, a continent of over 50 states and a population in excess of one billion, is becoming increasingly important for multinationals, mainly because of the continent's spectacular economic growth over recent years (admittedly, from a low base). As a result of this growth, Africa now very much forms part of the trade mark plans for most multinationals. As those who have had dealings with Africa will know, this presents peculiar challenges.

For starters, there are a number of options in Africa. National registrations are possible in many countries, and in some countries, most notably Nigeria and South Africa, national registration is the only option that's available. In some countries, the national registration systems are still quite basic, but trade mark laws have been updated in a number of African countries of late. As a result of these updates, the protections that companies now take for granted – services, colour trade marks, shape trade marks and the like – are now available in much of Africa.

Then there are the two regional registration systems. The first and best-known of these is the Organisation Africaine de la Propriété Intellectuelle ("OAPI"), the system used in much of French-speaking Africa. The most significant feature of this system is that it's a single registration system, a bit like the system that applies in the European Union. In other words, a single application filed at the OAPI headquarters in Cameroon results in a single registration covering all member countries.

The main difference between OAPI and the European system is that in the case of OAPI, there's no alternative of national registrations – the member countries don't have national intellectual property laws or registration systems. Here's a list of the countries that belong to the OAPI trade mark system: 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.

Then there's the African Regional Intellectual Property Organization ("ARIPO"), the system that applies in much of English-speaking Africa. The main feature of this system is that it's a designation system, a bit like the international registration system (Madrid Protocol). In other words, a company decides in which member countries it wants protection and then it designates those countries in its application. The system is headquartered in Harare, Zimbabwe. The countries that belong to the ARIPO trade mark registration system are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe.

Finally, there's the international registration system (Madrid Protocol), a system that's growing in importance in Africa. A number of African countries have joined the system and, most interestingly, OAPI has joined as a regional member. This means that OAPI can now be designated in an international registration in the same way as the European Union. It also means that a company based in an OAPI country can file an OAPI application and use that filing as a basis for an international registration. The following African countries and organisations belong to the international registration system: Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI, Rwanda, São Tomé and Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

This brings us to an issue that can't be avoided – some have concerns about the validity and enforceability of international registrations in certain African countries because not all African countries that have joined the system have made the necessary amendments to their laws. There are, in fact, similar concerns about the ARIPO system in some countries, but that's a topic for a separate article.

What the Nando's story emphasises is that we're no longer dealing with one-way traffic. While in the past it was all about foreign companies seeking to protect their trade marks in Africa, companies based in Africa are now also looking to protect their brands in other parts of the globe. Companies based in countries that belong to the international registration system will find this all the easier.

ENSafrica offers the full spectrum of IP services across the African continent. It also manages several large African trade mark portfolios of both South African and foreign companies, with specialist attorneys handling trade mark prosecution, enforcement and commercial trade mark matters on the continent.

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.

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