South Africa: No ‘One-Size-Fits-All' For Branded Goods Entering African Countries

Last Updated: 21 May 2019
Article by Sibongile Dee
Most Popular Article in South Africa, June 2019

The role of Customs in the enforcement of intellectual property rights and the fight against counterfeit goods in Africa

The demand for branded goods in Africa is growing and, as such, the instances of infringing and counterfeit goods are on the rise. The various intellectual property (IP) rights protection measures available to brand holders differ from country to country and vary from region to region.

The purpose of the enforcement of IP rights in Africa, as it is worldwide, is to protect the rights holders and owners, and the brands, reputation and communities at large, and ultimately, to find and punish infringers and destroy the infringing goods.

As a method of enforcing IP rights, some countries in Africa have specific Customs recordal regulations and practices focused on the registration of brands and detention of suspect counterfeit goods relying on specific anti-counterfeiting legislation, whereas in others, alternative means of enforcement, which can be effective in the fight against counterfeit goods, are required to be adopted. As a result, a "one size fits all" anti-counterfeiting strategy cannot be easily applied or adopted in covering key regions and territories in Africa.

As starting point, it is imperative to note that in African countries the initial step in acting against counterfeit goods is for brand owners and/or holders to secure trade mark registrations for their brands in the relevant countries in order to follow the Customs Recordal Process, or for any alternative relief which is possible in the countries, to be effective.

As aforementioned, some countries have specific anti-counterfeiting laws and dedicated anti-counterfeiting bodies in place, whereas others do not and here we provide a birds-eye view of the role that Customs can play in assisting brand owners and/or holders with the battle against counterfeit goods in two African territories; Kenya – where there is specific anti-counterfeiting legislation as well as a Customs Recordal system and Rwanda – where there is no legislation dealing specifically with anti-counterfeiting and nor a Customs Recordal system and non-traditional, alternative means of enforcement have to be adopted.

Kenya

Kenya is one of two African countries that has specific anti-counterfeiting legislation in place in the form of the Anti-Counterfeiting Act, 2008. The Act created a body, the Anti-Counterfeiting Authority (ACA), established to assist rights holders with search and seizure operations in the marketplace and at various ports of entry.

The Act enables rights holders to lodge complaints of suspected counterfeiting, relying on their registered trade mark rights, for example, which will result in a search and seizure. It further empowers ACA inspectors to enter and search premises, seize counterfeit goods and arrest suspects without a warrant. Rights holders are also allowed to apply to the Commissioner of Customs for the seizure of suspected counterfeit goods and create presumptions in favour of the rights holder. In terms of the Act, infringers will face harsh penalties, including a five-year prison sentence.

Kenya has a Customs Recordal system that is facilitated by the ACA. Upon receiving the relevant documentation meeting the requirements for the recordal and the ACA is satisfied with the correctness and accuracy of the application, the ACA will disclose the IP particulars with customs officials at the border. This ensures that no goods are imported or exported to or from Kenya without being inspected by the officials and therefore provides brand holders and/or owners with quick and effective recourse in dealing with infringers as well as the counterfeit goods.

Rwanda

There is no specific legislation on anti-counterfeiting or any procedures for recording IP rights with customs authorities in Rwanda. However, the IP Law provides that customs authorities may on its own initiative or upon application, in line with the requirements, by an owner /licensee of IP rights/any other interested party, suspend the release of goods into free circulation which are suspected to be counterfeits.

Therefore, brand owners may apply (on an ad hoc, case by case basis) for the suspension from entry of any suspect counterfeits where such information is available to them. The goods are suspended for a period of 20 working days or 30 days, whichever is longer, and the brand owner should, within that time, make a formal application to court or tribunal to establish whether the goods are actual counterfeits.

Contrary to popular belief, many African countries have an acceptable standard of legal remedies and capacity and effective action can be taken against counterfeiters in South Africa, Kenya, Rwanda, Mozambique and Tanzania, to name only a few.

Although many African countries may not have formal processes in place, that is, legislation or customs recordal, effective protection is available in several territories and enforcing those provisions cannot be underestimated. To achieve the best results, diligent preparation is required. For a successful anti-counterfeiting programme, brand identification training is highly recommended, otherwise it is difficult and at times impossible for Customs and/or the police to identify and detain possible counterfeit goods.

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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