Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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

Algeria flag

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

Liberia flag

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

OAPI logo

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

WIPO logo

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

Nigerian Oil

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. 

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making