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Maximize protection in Africa

An INTA Annual Meeting panel today will discuss the best strategies for protecting your marks in Africa, as James Nurton discovers.

Your client is rolling out a new global brand, but budgets are tight so you need to decide which countries to protect in. Of course, you will register in your main markets but what about developing countries that may become important markets in the future? Is it worth obtaining registrations? Are there cost-effective and legally sound ways to do so using regional systems or the Madrid Protocol? And what can you expect from trademark offices if you do decide to register?

If you find yourself asking those sorts of questions, a session today on trademarks in Africa will be invaluable. The continent is home to more than 1 billion people, one-sixth of the world’s population. But it comprises 56 countries, with a variety of languages and legal traditions, so obtaining trademark protection is complicated. To make matters even more difficult, in some African countries it can take years to obtain a registration.

Marco van der Merwe of Spoor & Fisher, who is moderating today’s session, adds that many countries also have unfamiliar characteristics: “Many African countries still have their own classification system, with up to 56 classes, dating back to the nineteenth century.” And then there is South Sudan, a new country that as yet has no trademark law at all. In this case, advises van der Merwe, the best strategy is “belt and braces”: publish a cautionary notice stating your rights in a local newspaper to try to establish common-law rights. He says that such an approach has proven effective in countries such as Ethiopia in the past.

Despite the challenges, there are systems to help trademark owners. The Organisation Africaine de la Propriete Intelectuelle (OAPI) enables applicants to register marks in 16 French-speaking countries, while the African Regional Intellectual Property Organisation (ARIPO) has 18 English-speaking member states. Today’s session will discuss how both work, and van der Merwe says they provide contrasting lessons: “OAPI works really well but ARIPO not quite so well, mainly because the national legislation of the participating countries hasn’t been amended.” Gift Sibanda of ARIPO will explain more in today’s session.

International trademark owners who use the Madrid System can also extend their rights to the 16 African countries that are members. But again there are problems in some common-law countries where there are doubts about whether the implementing legislation has been passed. It is important to be clear what the status is in each country, says van der Merwe: “In some registries, all those files from WIPO literally sit in a corner somewhere because the registry staff don’t know how to deal with them.”

This highlights a problem that afflicts many parts of Africa—lack of resources and outdated equipment. While there are countries such as Namibia that has a modernized system, and Zimbabwe where applications are published in about nine months, there are others where nothing happens to applications for two or three years. This can be frustrating, but van der Merwe says it is important to remain patient: keep records, help the office where you can (without telling them what to do) and support the local profession in their efforts to improve the infrastructure.

Van der Merwe emphasizes that most multinationals with global brands seek protection in the major African markets, as well as in those countries where they have local manufacturing. Some industries are also driven to register more broadly by local developments, such as the discovery of oil in Angola and gas and coal in Mozambique. The lesson is: with patience and a clear strategy, you can get protected.

CW02 Regional Update-Africa takes place in room 147 AB at 10:15 am

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