Timing can play a crucial role in trade mark protection, particularly when deciding on a filing strategy in Africa. While some jurisdictions follow the first-to-use rule, others apply the first-to-file rule.
The first-to-file rule applies in several African jurisdictions, where trade mark rights are attained through registration only, not use. This means that the party who applies to register a trade mark first will gain rights to that trade mark, even if another party used it first, making it essential to file and secure registration as early as possible in first-to-file jurisdictions.
Failing to do so will not only leave a brand owner vulnerable to third parties registering or using its trade mark, it will also put its business at risk and prevent it from entering a country, or require it to stop using its trade mark there.
We are seeing a sharp rise in the need to enforce trade marks across the African continent due to unauthorised use of trade marks by third parties such as distributors, importers and counterfeiters. In first-to-file countries, such enforcement and prevention of counterfeit goods are almost impossible unless a brand owner has adequate registered trade mark rights in place.
To guard against the above risks, we strongly recommend that brand owners file their core trade marks in the following first-to-file territories in Africa:
- Algeria
- Angola
- Djibouti
- DRC
- Ghana
- Libya
- Liberia
- Madagascar
- Morocco
- Nigeria (limited protection for prior use)
- OAPI (17 jurisdictions with limited protection for prior use)
- Rwanda
- Sudan
- Somalia
- Tunisia
- Zambia
ENS' IP team proactively ensures that its clients' valuable IP assets are adequately protected. With a real African footprint, and with a team specialised in navigating Africa's trade mark landscape, we are able to ensure that the risks associated with first-to-file territories in Africa are mitigated. Our team offers exclusive packages designed to help clients secure trade mark protection in these markets, with bulk discounts offered.
We urge brand owners to take proactive steps to protect their trade marks as soon as possible, especially in first-to-file territories in Africa. Please reach out if we can assist to identify your core trade marks and classes and develop a commercially sensible and cost-effective trade mark protection strategy.
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.
