Africa is rising: with double-digit growth figures in many sub-Saharan countries as well as a growing middle and upper class, Africa and its 1.2 billion consumers (projected to double in the next 30 years), represents an untapped, dynamic, fast-moving and competitive market that businesses can scarcely ignore. Brand owners are increasingly paying attention to this new African dynamic and have started to invest African markets with products and services. Although bursting with potential, Africa is not an easy market for companies to operate in and thrive into. To succeed it is important to understand the African reality, its particularities and the rapid changes that are taking place in a continent with fifty-four diverse countries. Furthermore, the increasing commercial opportunities in Africa have attracted the attention not only of legitimate businesses, but also of counterfeiters and unscrupulous traders.
The first step to protect your brand is to register your trade mark. While registration does not prevent future infringements, it grants exclusive right to the trade mark owner to use the mark and to prevent its unauthorised use on identical or similar goods and services. Registering a trade mark in Africa is however not always a straight forward task, and may pose numerous challenges to right holders, both within the regional organisations and national jurisdictions in Africa. Good contacts in the respective countries and up-to-date information are crucial to secure a speedy and successful registration. This article discusses the challenges surrounding trade mark registration in Africa. The article discusses first trade mark registration at the two main regional intellectual property organisations in Africa: the African Regional Intellectual Property Organization (ARIPO) and the Organisation Africaine de la Propriété Intellectuelle (OAPI, in English referred to as African Intellectual Property Organization). The article then touches on trade mark registration in certain African domestic jurisdictions and the challenges faced by right holders, and finally the registration of well-known trade marks as defensive trade marks in certain jurisdictions.
- Trade mark registration at the regional organisations
There are two regional IP organisations in Africa: OAPI and ARIPO. The OAPI is a group of 17 predominantly Francophone member states: Benin, Burkina Faso, Cameroun, Central African Republic, Comoros, Republic of Congo (Brazzaville), Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad and Togo. All member states apply a uniform law, the Bangui Agreement and its ten annexes. The annexes have the status of domestic laws in each member state. The OAPI member states have adopted a common administrative procedure giving rise to unitary IP rights, which automatically extend to all member states and no designation of countries is necessary. Only the regional Office headquartered in Yaoundé, Cameroon delivers the industrial property titles valid in all member states.
The OAPI joined the Madrid Protocol for the International Registration of trade marks in 2014 and it is thus possible to designate the OAPI in an international trade mark application. There has been some debates as to whether the OAPI could validly join the Madrid System without amending the Bangui Agreement. It is clear that the OAPI holds the opposite view and will do all that is necessary to ensure that International registrations designating OAPI have the same effect as direct OAPI registrations.
Under the current version of the OAPI Bangui Agreement, a trade mark is first registered and only thereafter published for opposition. This means that third parties are only made aware of the existence of a trade mark once it has been registered by the OAPI Administration and published for opposition. If a third party wants to contest the validity of an OAPI trade mark registration, this can be done by filing an opposition against the trade mark registration. The opposition procedure is handled in the first instance by the Director General of the OAPI and lasts approximately 18 months. In case the decision of the Director General is appealed, the Higher Appeal Commission of OAPI makes a final determination of the matter. This takes at least another 18 months. This lengthy post-registration opposition procedure is sometimes abused by infringers, who in the meantime rely on their trade mark registration to resist an infringement action and to continue to sell products under a trade mark which infringes a third party right. There are also cases where trade marks, which have been cancelled by the Higher Appeal Commission of OAPI as a result of an opposition procedure, are re-filed in bad faith. A duly registered OAPI trade mark is therefore only the first step in protecting your mark, but a constant monitoring of newly published trade marks is necessary.
ARIPO regroups mostly English-speaking African economies: Botswana, eSwatini (formely Swaziland), The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé & Principe, Sierra Leone, Somalia, Sudan, Tanzania, Uganda, Zambia, and Zimbabwe. ARIPO is a simplified application system, whereby applicants can pick and choose countries in which they wish to obtain protection for their trade mark (an African mini-Madrid). ARIPO member states retain their national IP legislation and have national offices which issue and register titles of industrial property valid domestically.
The relevant protocol on trade marks under the ARIPO system is the Banjul Protocol, with the following member states: Botswana, eSwatini, Lesotho, Liberia, Malawi, Namibia, São Tomé & Principe, Tanzania, Uganda, and Zimbabwe. Right-holder can register their trade marks in these member states through a single application in one language indicating all or part of the states. The single application, filed either in a national office of a contracting state or directly with the ARIPO Office in Harare, Zimbabwe, has the effect of a regular national filing in the states designated in the application. So far only four of the ten members of the Banjul Protocol have expressly domesticated – that is to say transposed into national law – the Protocol (Botswana, Malawi, Namibia and Zimbabwe), prompting recurrent questions from right holders related to the domestic application of the Banjul Protocol and the secureness of their registration.
In all fairness, the issue of the domestication of the Banjul Protocol is quite challenging. In countries where the Banjul Protocol has been domesticated, there is no doubt on its domestic applicability. For example, the Zimbabwe Trade Marks Amendment Act 2001 clearly states that a mark registered at the ARIPO under the Banjul Protocol has the same effect as a domestically registered mark.
What then is the situation for countries that are member of ARIPO but have not domesticated the Banjul Protocol? The answer to this question is not clear-cut, although support for a positive response might be found in the Ugandan case law. In Anglo Fabrics (Bolton) Ltd v African Queen Ltd (2008) the High Court of Uganda created a precedent on the recognition of the Banjul Protocol and this case may be viewed as support to the argument that ARIPO trade marks designating Uganda are valid in the country.
In other states, regard may be had to the general rules on the domestication of international instruments, which would include the Banjul Protocol. In Lesotho, the Industrial Property Order of 1989 provides that in case of conflict with the provisions of this Order, the provisions of the international treaty in respect of industrial property to which Lesotho is a party, shall prevail." A similar provision is applicable in eSwatini.
With so few states guaranteeing the direct enforceability of the ARIPO registrations, is the registration worthwhile? The answer belongs to the right holder, depending on the level of risk he finds acceptable. It can further be that for some right holders, the countries not having yet domesticated the Banjul Protocol are countries with little or no market share and where an ARIPO registration with a single fee makes more sense.
- Domestic registrations
More and more African states are joining the Madrid Protocol for the International Registration of trade marks. It is possible to designate the following regional organisation and countries in an International trade mark registration under the Madrid system: eSwatini (formerly Swaziland), Gambia, Ghana, Liberia, Lesotho, Madagascar, Mozambique, Namibia, OAPI [Benin, Burkina Faso, Cameroun, Central African Republic, Comoros, Republic of Congo (Brazzaville), Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad and Togo], Rwanda, Sierra Leone, Zambia and Zimbabwe.
Some practitioners doubt the enforceability of International trade marks in some African countries, due to the absence of 'domestication', that is to say a national enabling legislation confirming that International registrations have the same value as a national trade mark and providing the local IP administration with guidance and procedures in relation to the examination of International trade marks.
There is no doubt on the enforceability of International trade mark registrations in Liberia, Namibia, Kenya, Mozambique, Tunisia, Morocco, Zimbabwe and Rwanda. In the other countries, we are not aware of any decision whereby an International trade mark registration would have been held to be unenforceable in the absence of 'domestication'.
In numerous countries however, domestic registrations are still the only option for the protection of trade marks. It is not possible in this article to go into detail on the registration procedures of the different African countries, but it is important to keep in mind that in some countries, like for example in Ghana, Nigeria, and Democratic Republic of Congo, the procedure can be very long and burdensome. In some countries, trade marks are even due for renewal before they are registered. There are also jurisdictions where corruption is a serious problem and it is therefore very important to obtain originals of filing/payment receipts (there are cases where officers have been bribed to obtain false filing receipts whereas in reality no trade mark application has ever been filed). In other countries, like for example Mauritius and Kenya, the registration procedure is expedient.
Conducting a clearance search in Africa is also challenging: very often the results from an official search will not coincide with those of a search in a private database. In this event the question is whom to trust? In some countries this is further complicated by common law trade mark rights that are granted to the user of unregistered marks. A recent case decided by the Kenyan High Court prompted this issue. In Fibrelink Limited v Star Television Production (High Court) (2018), the court held that any mark, whether registered or not, and whether well-known or not, is afforded protection under trade mark laws in Kenya, as long as the mark has been in use in the country. It is therefore possible in Kenya to oppose a trade mark application on the basis of a common law or unregistered trade mark. This creates legal uncertainty, because a search at the IPO will not disclose the unregistered mark, which will only be detected by a market check. Such innovative judicial pronouncements are part of the dynamic African intellectual property landscape and right holders must be aware of such changes to ensure the continued protection of their trade marks.
Previously in both Rwanda and Burundi, once registered, a trade mark was perpetually valid and no renewal was needed. This is no longer the case. In Rwanda, existing trade marks registered under law 31/2009 of 26 October 2009 are scheduled for renewal by latest 14 December 2019. In Burundi, the Law of 28 July 2009 introduces a 10 year term for the validity of trade mark registrations. All trade marks registered under the old law have to be renewed no later than 28 July 2019.
- Defensive trade marks in Africa
With legitimate businesses, but also counterfeiters and unscrupulous traders interested in tapping into the African market, the need to protect well-known trade marks is genuine. Even in countries where well-known brands are not present on the market and where trade mark owners thus cannot easily satisfy the use requirement, brand owners should still protect their rights and their goodwill from copycats. One solution afforded to the right holders of well-known trade marks in certain African states is to register their well-known trade marks as defensive marks. Defensive trade marks allow a right-holder to register well-known marks for goods and services for which he has no intention of future use, where he fears that third parties might attempt to benefit from the goodwill of his trade mark for unrelated goods. A defensive trade mark is also useful for a right-holder which intends to move into other industries using the same trade mark as a later stage, but who under a 'normal' registration would be susceptible to cancellation for non-use. Six African states currently provide for defensive trade marks: Kenya, Nigeria, Seychelles, Uganda, Zambia and Zimbabwe.
For example, in Kenya, the owner of a registered trade mark, consisting of invented words and well-known in relation to the goods for which it is registered may apply for the defensive registration of the marks in classes which they do not intend to use and against which the non-use argument may not be raised. This applies where the trade mark become so well-known that its use for other goods could indicate a commercial connection. In Nigeria, the owner of a registered trade mark may apply for the defensive registration of his marks in classes which he does not intend to use and against which the non-use argument may not be raised. This applies to both goods and services. It is not necessary to establish use of the well-known trade mark. Brand owners of well-known trade marks are well-advised to explore these possibilities.
Trade mark registration is the first step in protecting a trade mark in Africa. Still, it is far from an easy process, but requires the constant vigilance of the practitioner together with up-to-compare date on the ground knowledge. The African intellectual property landscape is dynamic, with new laws being passed and courts issuing forward-thinking judgments, with significant implications for the right holder. Even where a state has ratified an international agreement or joined a regional organisation, a legal practitioner still needs to be wary and cognisant of the finer details. The procedure on paper may differ from the practice, and ignorance of such subtilities may result in a time-consuming procedure, and even a non-legally enforceable trade mark. Finally, with many intellectual property questions still untested by the tribunals, it is important to understand the level of risk accepted by the right holder and to craft a dedicated solution. This is why right holders need hands-on advice from experienced practitioners in Africa, opening them the access to the untapped and dynamic African markets.
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.