South Africa: Important Considerations Of Protection In Africa

Last Updated: 13 July 2018
Article by Lisa McIlwaine-Hill

Africa is one of the fastest growing economic regions in the world with countries with natural resources that supports industries such as mining, oil and gas, and agriculture, benefitting from increased commodity prices. Even countries without an abundance of natural resources have experienced economic growth in wholesale, retail, transportation, telecommunications, manufacturing, construction and finance. Contributing factors to this growth include good governance on macroeconomic policies, improved transport and logistics infrastructure, as well as less restrictive trade barriers.

Enforceable IP rights

The importance of securing enforceable IP rights in Africa grows with economic growth. More and more of Africa's population now live in cities with access to the internet, satellite television and social media which means brand exposure as never before.

There are 54 countries on the African continent with over 1500 different languages and dialects spoken, and trade mark rights and their enforcement often differ from country to country. It soon becomes clear too that trade mark protection strategies will also differ from country to country but are nonetheless very important before entering a market, particularly if products or services are to be offered through local agents or distributors.

Most African countries recognise common law rights acquired through continuous bona fide use of a trade mark, where the holder of a registered trade mark cannot prevent use of a mark by another party, provided such use by the other party commenced prior to the date of use and/or registration of the trade mark.

There are, however, some countries in Africa where common law rights are not recognised in their laws, or where laws do not make express provision for the recognition of common law rights. In these countries, owners would be wise not to delay in seeking trade mark protection. The danger here is that you may have been selling a particular product in a country for some time, but if the trade mark was never registered and a third party subsequently registers it, that third party may be able to prevent you from continuing to sell that branded product in that country, unless you are in a position (usually at prohibitive cost and delay) to prove bad faith or that your brand is well-known in that country prior to the other parties' application to register it.

To this end, it would be worth acquainting oneself with local laws as regards well-known trade marks and whether these are protected.

Important considerations

There is much to consider. Just by way of a few examples, priority applications may not be possible or you may discover that in terms of the definition of a trade mark in a specific country, a particular type of mark (for example, shape marks or 3D marks) is not registrable.

Trade marks in Malawi and Zambia, for example, cannot be registered in relation to services. And a trade mark application in Tanzania does not automatically cover Zanzibar despite both territories falling under the United Republic of Tanzania.

Certain goods are prohibited in some countries, for example, listing alcoholic beverages under classes 32 and 33 in certain countries would be against the law. There can also be local regulatory requirements. An example of this is the National Agency for Food and Drug Administration and Control (NAFDAC), responsible in Nigeria for regulating amongst other things the importing, advertising, sale and distribution of foodstuff (including wine and beverages), pharmaceuticals, cosmetic products, medical devices and chemicals. Proof of a Nigerian Trade Mark is a requirement.

Brand integrity

One should tread carefully in considering local meanings and connotations of a proposed trade mark which may have no specific meaning in one country, but which may have an offensive meaning or negative connotation in another country's language.

Another risk to brand integrity includes the common practice in certain African countries for infringers to copy a product label (particularly design and colours) instead of the particular product name. This may be due to low levels of illiteracy in some regions and/or diversity in languages. However, it seems that association with many brands in some regions is primarily through images and colours (get-up) and not always the brand name itself.

Brand owners are advised to seek protection for colour label marks and/or entire product get-up (i.e. the overall look and feel of the product) in addition to the product name.

Timing

If trade mark owners envisage a pan-African filing programme where timing is crucial, they must bear in mind that searches in some countries can take several weeks. It may also take some time to gather, translate and legalise documents required for filing applications in certain countries.

Pricing

The cost of filing single trade mark applications in Africa can vary considerably depending on the country or regional systems concerned and whether or not multi-class or single class applications are allowed.

Trade marks can be registered in Africa either nationally under the Organisation Africaine de la Propriété Intellectuelle (OAPI), under the African Regional Intellectual Property Office (ARIPO), or designated under an International Registration under the Madrid System. Each system should be assessed as to suitability. Registration of trade marks is not possible in Somalia or Eritrea where no trade mark laws apply. In these territories trade mark owners can elect to publish so-called Cautionary Notices in local newspapers as a means of announcing and making their proprietary rights known to the public in that region. This practice has recently been reintroduced in Somalia after years of suspension. The publication of Cautionary Notices remains suspended in Eritrea at this time. Trade mark applications in South Sudan have also been suspended until such time as new laws are enacted in this country.

Counterfeit goods imported into Africa include clothing and accessories, DVD's, CD's, computer games, computer software, food products, car spare parts and pharmaceuticals. African consumers appreciate branded products and low-income levels make genuine products inaccessible to the majority. Counterfeiting is often not considered to be a serious crime. This, together with poor protection/delayed enforcement of intellectual property rights and anticounterfeiting policies, has resulted in Africa becoming an increasingly popular destination for counterfeit goods. Registered trade mark rights are useful tools in combatting counterfeit goods. In many African countries one of the requirements for assistance from local customs and excise authorities is the recordal of a registered trade mark for that product.

Trade mark registration and an active drive to eradicate counterfeit goods from Africa is gaining momentum. IP firms across the continent are actively involved in sharing knowledge and consulting with, and introducing training programmes to, customs officials with a view to stopping Africa from being an attractive dumping ground for counterfeit goods. Good systems and training means quicker prosecution, in turn leading to revitalised confidence in trade mark owners to seek registration in a country where they may have previously considered this to be pointless.

Africa is a very exciting continent in which to practice trade mark law, however, it is important to partner with a law firm who has experience in doing business on a daily basis on this continent that is like no other. Sharing thoughts on strategy (legal and commercial), striving to provide practical solutions on how best to obtain optimum brand protection in the African market, and providing clients with the most effective and practical solutions to pan-African trade mark protection results, in the ultimate successful partnership.

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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