Managing IP is part of the Delinian Group, Delinian Limited, 8 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: 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 When this bill becomes law the outdated goods only/Part A and Part B registration system will be replaced with a modern one that allows for the registration of 'non-visual signs' and trade marks used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

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tong and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role
The French finance minister told António Campinos the timing of an EPO event in Lisbon could be seen as interference in the EUIPO leadership race