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Focus on Africa: trademark strategies

21-06-2017

The world’s second largest continent has had a turbulent history, but in recent years Africa has been seen by many as a market with great potential. Novagraaf’s Vanessa Harrow considers how brand owners looking to operate and thrive in the fast-moving economy can protect their trademarks on the continent.

Africa is a unique market with a multitude of languages, belief systems, customs and legislative systems. While its potential has undeniably been hindered by issues of governance, weak legal systems and political unrest, this diverse and growing economic landscape is predicted by many to be the next powerhouse of the world economy.

Increased urbanisation, advances in technology and a growing working population put African countries in a strong position to grow the economy and help the continent become a major player in the global market. IP rights will play an important role in that growth.

Trademark protection in Africa – do you have it in place?
As consumer spending and investment opportunities increase on the continent, so does the importance of IP. Ensuring your brand is adequately protected will help your business take advantage of the growing economy while protecting you from third-party diluting brands and counterfeit products. 

As with any economy and market, your brand name indicates to consumers that the product originates from the same point of control as other products under that brand. It provides customers with an easy identifier to make repeat purchases and provides customers with certainty regarding quality. IP laws provide a form of protection for your investments and prevent third parties unfairly and unduly benefiting from your efforts, whether that is your efforts in building a brand image and awareness or your research into the next big technological advancement.   

In parts of Africa, trademarks can be protected by way of both registered and unregistered rights. While there are some issues regarding the ease with which owners can enforce registered trademark rights, enforcement of unregistered rights is even harder and businesses are therefore advised to prioritise securing registered protection. 

The importance of registered rights
Securing registered rights is particularly important if you intend to operate via third- party agents or distributors. It is not uncommon for third parties to identify gaps in trademark protection and seek to secure registration in their own name. While such registrations can, in most countries, be challenged on the basis of bad faith, this can be a costly and time-consuming exercise.  It is therefore important to ensure you have your registered rights in order before seeking to engage third-party involvement.  

Another issue for consideration is the risk of counterfeit products flooding the market. Sub-Saharan Africa in particular has a reputation for cheap counterfeit products. Securing registered rights for your trademarks goes some way to combating the risks of counterfeit goods. In many countries, one of the basic requirements for seeking anti-counterfeit assistance from authorities is trademark registration.  

Trademarks, like all forms of IP, are an important asset for businesses in any economy but in a fast-moving and growing market like Africa, they are vital. In a market which is predicted to rapidly expand while dealing with problems of counterfeit products and poor consumer awareness, securing your position in the market may be near impossible without the benefit of trademark protection.

Obtaining trademark protection
The African continent has more than 50 independent states and each country is governed by its own IP laws. In some African countries trademarks benefit from some unregistered protection acquired through use; however, as mentioned earlier, priority should be given to securing registered rights.  

Registered trademark protection can currently be secured through a number of channels, as follows:

  • Organisation Africaine de la Propriété Intellectuelle (OAPI)
    A single trademark application under the OAPI system provides a unitary right automatically covering all 17 members, namely: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of Congo, Cote d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo.

    These countries are members of the Bangui Agreement and have no national filing option for registered trademark protection.  

    The OAPI is similar to the EU trademark system administered by the EU Intellectual Property Office, with the difference being that members of the European Union still have their own national rights which run alongside the EU system.
  • National Rights
    National protection can be sought in all African countries apart from Somalia, South Sudan and the countries which are part of the OAPI system (members of the OAPI system have no national system for registration and can only be protected by way of an OAPI registration).

    In Somalia, following an overthrow of the government in 1991, it became impossible to file new trademark applications or maintain existing rights.

    South Sudan separated from Sudan in 2011. New trademark laws are yet to be implemented, and the country’s Ministry of Justice has issued written confirmation that all trademark applications have been suspended until such time as new laws are enacted. It is believed that any applications filed will have the effect of giving the trademark priority over others filed when a new law finally enters into force; however this is not certain.

    Each of the remaining countries in Africa has its own laws and administrative requirements and procedures which must be complied with.  

  • African Regional Intellectual Property Office (ARIPO)
    This covers 19 African countries, namely, Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.  

    These countries are members of the Banjul Protocol which allows a single application to cover all member states. Each of these countries also has their own national systems and the ARIPO is a unified filing system designed to help ease the cost and maintenance requirements attached to protection in these countries.

    The system provides a bundle of national rights which can be refused separately under national laws of each member. This is similar to the International trademark (IR) system administered by the World Intellectual Property Office (WIPO).  Trademark laws are not harmonised across the members of the Banjul Protocol and rights secured via ARIPO are enforced nationally.

  • International rights
    WIPO operates a unified international filing system which allows multiple jurisdictions to be protected by way of a single application. Once accepted by WIPO, the application details are communicated to the local office of each jurisdiction designated and the application is examined under local laws. The resulting registration provides a bundle of local rights maintained at International level but enforced at local level.

    Members of this system are signed up to Madrid Agreement and/or Protocol. Currently there are 20 African jurisdictions which can be designed under an International application, namely: OAPI , Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

    There has been some debate in recent years regarding the legitimacy of some members’ accession to the system and the ability to enforce rights. In some African countries it may therefore still be prudent to use the national / OAPI / ARIPO systems rather than seeking protection by way of an International registration.

Prioritising your efforts
The best approach for protecting trademarks in Africa will be heavily influenced by the countries of interest and the requirements of your business.   

The challenges presented in many African countries can make the legal landscape a difficult one to navigate. While there are often significant delays resulting from problems with infrastructure and unrest in Africa, a number of countries are taking steps to improve and ease the process. Novagraaf has a network of experienced and reputable associates working across Africa and together we can help steer your business through the process to ensure your trademark protection is as strong as possible.  

The protection for trademarks discussed above focuses on protection from a legal perspective, however, the concept of commercial protection is as important. A lack of education concerning brand awareness amongst consumers and a desire to find the cheapest prices makes this part of the world a hot-spot for counterfeit products. Additionally, the cultural and legal background of markets makes it a very different playing field to much of the rest of the world and indeed extremely different from the Western economies of the world.  

These difficulties cannot be remedied by securing registered rights alone and success in Africa will also require a focused and tailored commercial strategy to establish and maintain a position in the market. This strategy must include an important focus on consumer education to help build brand recognition and loyalty.

While Africa has experienced economic and political turbulence, the continent is presenting some exciting prospects for the future and as businesses prepare to invest in the growing economy, steps should be taken to protect that investment. Securing and maintaining your IP rights is an important part of the process and should be prioritised as part of your entry and growth strategy. Effective protection of your trademarks will involve a combination of legal and commercial steps which must be specially tailored for the unique challenges of the African market.

If you require any advice regarding protecting your IP on the African continent, please contact us to discuss your needs further.

Vanessa Harrow is a part-qualified trademark attorney in the Manchester offices of Novagraaf.