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Africa: Trade mark and copyright developments in Africa

In Nigeria there were two important trade mark judgments, both of which went in favour of foreign companies. In the case of Piaggio & CSPA v Autobahn Techniques and the Registrar of Trademarks (Federal High Court, Lagos, November 30 2017) the court made it clear that a Nigerian distributor cannot take the trade mark of its foreign principal. The judge sent this warning to Nigerian distributors: extensive promotion does not amount to 'acquisition of proprietorship and goodwill.'

The case of Toyota Motor Corporation v Subaya Metalware Nigeria and Registrar of Trademarks(Court of Appeal, Lagos, December 29 2017) is unusual. In this, the appeal court held that the mere filing of a trade mark application cannot be interpreted as use of a trade mark and, by extension, infringement of another registration. The court also came to the finding that car stereos are car parts and therefore fall in class 12 rather than class 9. This meant that certain class 9 registrations for trade marks incorporating the word Lexus were not infringed simply because the Lexus car has a detachable car stereo marked Lexus Premium System.

In South Africa, an interesting decision was made in The Philanthropic Collection (Pty) v Girls & Boys South Africa (Gauteng High Court, February 15 2017). This case dealt with copyright in databases. The judgment examines what level of contribution is necessary before a party can be considered a joint owner of copyright. The judge held that creating a single form that led to information being added to an existing database did not constitute the 'skill, judgment or labour' required to confer joint ownership.

The authorities in Malawi have published the Trademarks Bill 2017. When this bill becomes law the outdated goods only/Part A and Part B registration system will be replaced with a modern one that allows for the registration of 'non-visual signs' and trade marks used for services. There will also be protection for well-known marks, an infringement right that extends beyond the actual goods/services covered by the registration and 10 year registration/renewal terms. The bill anticipates Malawi signing the Madrid Protocol and seemingly puts an end to doubts about the validity of ARIPO registrations in Malawi.

Duncan Maguire Chris Walters

Spoor & Fisher Jersey
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