This article is written by Jonty Warner (associate) and Zoe Bartlett (trainee solicitor).
As more global businesses expand into the growing African market, protection of their brands has become increasingly important. However, gaining trade mark protection in Africa has proven to be difficult for many brand-owners. Research by the World Intellectual Property Office (WIPO) found that in 2013 only 2.4% of all trade mark applications made worldwide were filed in Africa. Whilst significant issues remain, efforts are being made to reform trade mark law and procedure throughout the continent, and there are reasons for optimism.
Businesses planning to register trade marks in African countries should be aware that there are often long delays in the application process.
For example, in Nigeria there are often delays of 12-24 months in advertising new trade mark applications (which is a key stage in the process and allows third parties to oppose applications), due to insufficient resources. The accompanying backlog means that over the course of 2013 there were 19,332 trade mark applications filed, but only 4,369 new registrations. Recently, however, there have been significant attempts to improve the situation in Nigeria by digitising databases, issuing trade mark journals more frequently and speeding up the issuance of registration certificates.
In Gambia, meanwhile, renewal fees are payable 14 years after the filing date, but there have been instances where trade mark applications are still pending after this 14-year period. This has left applicants unsure whether they have to pay a renewal fee despite not actually having a registration.
More generally, the application procedure is often less flexible in many African countries than, for example, in the EU. Businesses should ensure they comply with all deadlines as it may be difficult to get extensions of time, for example, to respond to the provisional refusal of an application; and the local Registry may not respond to an application for an extension, leading to a lack of clarity for businesses.
The political situation in some African countries can also cause unforeseen problems with filing trade marks, such as during the Arab Spring. In 2014 the Libyan trade mark office closed for several months until it was reopened under the control of the Fajr Libya Militia.
Trade mark infringement decisions are rare in Africa, making it difficult for businesses to enforce their marks. However, it is even harder to rely on unregistered rights, so businesses should always as a priority seek registrations for their key brands.
The scarcity of infringement decisions means there is a general absence of precedent which can make it more difficult to assess the strength of any potential claims. In addition, in some cases the Courts do not provide full reasoning. For instance, in Weetabix v Manji Food (2013), the Kenyan High Court decided that Weetabix was a well-known mark but did not explain the basis for this, providing no guidance to other businesses who are unsure whether their mark will be treated as well-known for the purposes of enforcement.
Pan-African IP Organisations
There are currently two main organisations governing centralised trade mark applications, which between them represent 36 of the 54 countries: the Organisation Africaine de la Propriété Intellectuelle (OAPI) (17 members, mostly French speaking countries), and the African Regional Intellectual Property Organisation (ARIPO) (19 members, mostly English speaking countries). Countries which are not members of either organisation include Nigeria, South Africa and a number of countries in Northern Africa.
OAPI’s centralised filing system has had a reasonably good uptake and is useful for businesses wishing to protect trade marks in more than one member state. In 2013 it received 7,743 applications and granted 6,325 registrations. Registrants can file one OAPI application which covers all member states and there is no need to designate particular states where protection is sought.
When they join OAPI, each member state must renounce its national IP laws so the same laws apply in each state. These laws are very detailed and share some similarity to EU trade mark law; for example, the Nice Classification of goods and services applies, and well-known marks are given additional protection.
OAPI also recently acceded to the Madrid Protocol (which allows brand-owners to apply for a trade mark in a number of countries by filing a single international application, albeit if successful an applicant ends up owning a bundle of national rights as opposed to a unitary registration). However, there has been some debate over whether or not OAPI’s accession was valid and, until this is resolved, it may be prudent for brand-owners to file an application directly with OAPI rather than designating OAPI through the Madrid Protocol.
ARIPO’s centralised filing system has not been as well-received as OAPI’s and, as yet, does not represent a particularly effective route for businesses to protect their trade marks. The uptake for filings has been very low: in 2013 there were only 593 applications and 291 registrations. One reason for this is that only four of the member states (Botswana, Lesotho, Liberia and Swaziland) allow for multi-class applications, which means that in all other member states, a separate application must be filed for each class of goods and services, which can add significantly to time and costs.
The Banjul Protocol allows for the filing of a single application to cover all member states, which can save costs in the filing process. However, the resulting registration is treated as a bundle of national rights and a member state can, within 12 months of the filing date, notify ARIPO that that mark will not be protected in that state.
One of the major issues with ARIPO is that trade mark law is not harmonised across member states so any infringement claims are conducted under the national laws of the country where the infringement occurs, which can lead to uncertainty and increased costs.
As a result of these issues, businesses should consider filing applications in each country in which they intend to launch as an alternative to filing an application through ARIPO.
In an attempt to overcome some of the problems associated with applications through OAPI and ARIPO (and in particular that together they cover only 36 of the 54 African countries), the African Union is preparing to launch the PAIPO (Pan African Intellectual Property Organisation), which will allow for a centralised African registration system and will apply to all members of the African Union which sign up; although it is not yet clear which states will choose to join.
A final draft of the governing statute was published in 2012 and the PAIPO is expected to be established soon (albeit it is not clear what the proposed launch date is), with its headquarters in Tunisia. In theory the ability to obtain a pan-African registration should be good news for those conducting business in multiple African countries. However, there have been some concerns over the transparency of the PAIPO consultation process, and it is not yet clear how the PAIPO will interact with OAPI and ARIPO.
Historically there have been significant issues with registering and enforcing trade marks in Africa, and businesses still need to be aware of these when looking at how best to protect their brands. However, recent changes at the national level suggest that efforts are being made to overcome these problems and improve the situation.
The establishment of the PAIPO could also potentially be a positive step; however, this will depend on whether the issues surrounding the PAIPO's implementation (and in particular its interaction with existing structures) can be successfully resolved.