Africa may not always have been a high priority for international brand owners. But that may be changing. economies in the continent are becoming more developed and globally focused, while some governments have made efforts to improve protection for trademark owners.
Says Owen Dean of Spoor and Fisher, who is moderating today's session on trademark developments in Africa: "In general there has been a positive move to get registries to become more efficient and to get the legislation up to date."
Today's panel will look at developments throughout the continent – with speakers reviewing issues in southern Africa, the English-speaking west African countries (such as Nigeria), French-speaking countries such as Cameroon and the Arabic-speaking countries of northern Africa.
While the challenges facing trademark owners in each country vary, says Dean, "in general there has been a bit of catching-up and getting up to speed in Africa."
Many of these changes have come in trademark registries, which are computerizing and improving their systems to make it easier to register a trademark, and cut down delays. In South Africa, for example, the time taken to register a trademark has been cut from about three years to less than 18 months, and the government wants to reduce delays to about 12 months at most to make the country fully able to join the Madrid Protocol. South Africa is committed to joining the Protocol in principle, but putting everything in place is likely to take at least another two years.
Its neighbor Botswana joined the Protocol in December last year, so international trademark owners can now extend protection to that country.
In Nigeria, as in South Africa, there have been positive developments with the registration system, which will be addressed in today's session. In addition, the country's Federal Minister for Commerce recently announced that Nigeria will accept service mark applications for the first time. Although the details have yet to be confirmed, owners of service marks are already looking into the opportunity to file in Nigeria.
Many other countries in the continent have also recently passed new IP laws or amendments, or are considering doing so, including Burundi, Cape Verde, Ethiopia, Mozambique, Namibia, Rwanda and Uganda. Many of these reforms aim to harmonize aspects of trademark protection, for example by allowing service marks to be registered (as in Nigeria) or adopting the Nice Classification.
Enforcement questions remain
While there has been positive news for trademark owners regarding registrability, enforcement is another question. In many African countries, litigation over trademarks is rare – and where it does take place, it has not always delivered happy outcomes.
South Africa, for example, has seen a number of cases on novel trademarks, including over the registration of the color purple for chocolate by Cadbury, the registration of a bottle shape and most recently the registration of the imprint of the sole of a shoe. Dean says "there is a healthy scepticism" about such new types of marks, with the courts "lagging behind" the views of trademark practitioners: "We're finding there is a reluctance to concede monopolies in new-fangled marks such as shapes, containers, sounds and smells."
In last summer's bottle shape case, the Supreme Court of Appeal expunged a registration for the bocksbeutel wine bottle shape after the defendant in the trademark infringement case alleged that the mark was invalid. The court said that the bottle shape did not fulfill a trademark function. Dean says in such cases the courts sometimes look overseas for precedents: "The Philips v Remington case in the UK in particular has contributed to the scepticism of the South African courts."
These recent cases will be explained in today's session, which will also include a discussion during which questions relating to trademark protection in Africa can be raised.
