Africa: Trade mark and copyright developments in Africa
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 2024

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

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 When this bill becomes law the outdated goods only/Part A and Part B registration system will be replaced with a modern one that allows for the registration of 'non-visual signs' and trade marks used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 JerseyAfrica House, Castle StreetSt Helier, Jersey JE4 9TWChannel IslandsTel: +44 1534 838000Fax: +44 1534

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article