Africa and the Middle East IP news round-up, October 2015
GI status in OAPI for Scotch Whisky; the GCC Trade Mark Law implementing regulations approved; the practical consequences of Algeria’s accession to the Madrid Protocol; Liberia’s Senate adopts several international legal instruments on IP; and Nigeria’s state-owned oil company enforces its trade mark rights: Kingsley Egbuonu rounds up recent news from Africa and the Middle East
GCC Trade Mark Law implementing regulations approved
Abu-Ghazaleh Intellectual Property (AGIP) reports that the regulations implementing the GCC Trade Mark Law have been approved and will become effective in December 2015.
According to AGIP, the regulations include amended official fees, though it is possible for each GCC member state to set its own fees. This is a concern for some practitioners.
“The bad news is that it will be more expensive in some countries,” said Charles Shaban of AGIP (Jordan) in a regional update last May. For example, Kuwait has relatively low official fees in comparison to UAE, which is more expensive.
Rob Deans and Saba Al Sultani of Clyde & Co believe the GCC Trade Mark Law is generally a good development for brand owners in the region. “It will give rise to numerous improvements in the protection of trade marks in the GCC region. At its very simplest, the unified laws and procedures offered by the Law are likely to benefit brand owners through increased efficiencies,” they said in an article last year.
Practitioners in the region hope the regulations will clarify certain issues including national office practice when comparing goods or services across classes and the treatment of well-known marks.
Madrid Protocol now rules, thanks to Algeria
Following Algeria’s accession to the Madrid Protocol, WIPO has published a note explaining its practical implications and benefits to users of the Madrid System. The Protocol will enter into force in Algeria on October 31 2015. This means that from that date all international registrations of marks will be governed by the Protocol. WIPO has also published FAQs (see pages 2 – 4) on this.
Liberia’s Senate approves several ARIPO Protocols
We understand that the Liberian Senate has recently approved several bills to implement international legal instruments on IP, most of which are ARIPO Protocols. They include the Lusaka Agreement; the Harare Protocol on Patents and Designs; the Swakopmund Protocol on the Protection of Traditional Knowledge and Expression of Folklore; the Marrakesh Treaty; and the Banjul Protocol on Marks. These have been sent to the House of Representatives for approval.
The Senate and the House of Representatives must agree on a bill before it is presented to the president for signature or veto. This is a positive development for users of ARIPO considering the concern over the slow domestication of its Protocols in member states.
Scotch Whisky gains GI status in OAPI
The Scotch Whisky Association has confirmed that Scotch Whisky is now a protected geographical indication (GI) across the member states of the African Intellectual Property Organisation (OAPI). OAPI operates a unitary IP protection system. The Association can now take action in these countries against the use of the name on whisky not originating from or linked to Scotland and complying with its standards. Presumably, this will include monitoring applications for trade mark registrations.
Brian Olley, British High Commissioner to Cameroon, said: “This is a historic moment and a practical step forward in providing protection to guard against improper use of the name Scotch Whisky. From now on the consumers of Scotch Whisky bought in any of the 17 member countries of the OAPI can be better assured of the quality and authenticity of the product they are buying. It will also be easier to take effective legal action against those who try to defraud.”
Australia backs WIPO’s IP capacity-building projects
The Australian government has pledged A$3 million ($2 million) to support WIPO in its IP capacity-building projects in least-developing and developing countries. The new three-year funding will go into the WIPO-Australia Funds in Trust (FIT) programme, a project which began in 2012.
IP Australia Director General, Patricia Kelly, said: “IP Australia is proud to continue the work of the WIPO-Australia Funds in Trust program, which will allow our partner countries to develop their IP systems and enhance their capacity to use IP to aid economic development.”
Nigeria’s state-owned oil company asserts its trade mark rights
The Leadership paper reports that the Nigerian National Petroleum Corporation Retail Limited (claimant), Nigeria’s state-owned oil company, is taking legal action against a company over alleged infringement of its registered trade mark, NNPC, and for passing off. According to the report, the Corporate Affairs Commission (CAC) and Registrar of Trade Marks, Patent and Designs are co-defendants in the action.
The claimant argues that the defendant’s brand name (an acronym) is “phonetically and alphabetically confusingly identical/similar” to its trade mark. It is seeking various court orders which: (a) restrains the company from using the alleged infringing name in commerce; (b) directs the CAC to remove the alleged name from its register; and (c) directs the Registrar to refuse any application by the company to register a mark identical or similar to its trade mark. The claimant is also seeking just over $75,000 in damages.
As we reported in August, a Federal High Court in Nigeria ruled that where a registered company name conflicts with an earlier trade mark right then the CAC has the power to ask a company to change its name on the register and, failing which, to remove the alleged infringing name.