Trade mark law updates in Africa

Despite most of the world being in lockdown for the greatest part of the last year, Africa has not been idle and there have been some significant developments on the Intellectual Property front.

Since its government was overthrown in 1991, it has not been possible to obtain registered trade mark protection in Somalia. It has intermittently been possible to publish Cautionary Notices in a national newspaper to alert third parties to trade mark owners’ rights, but this does not afford any registered rights and serves merely to create awareness of unregistered rights.

The Ministry of Commerce and Industry (through the Trade Marks Office) is now accepting trade mark applications, relying on the laws that were in place in Somalia before the unrest broke out.

Although there was initially some uncertainty around opposition proceedings and the validity of such registrations, these uncertainties are steadily being resolved.

Trade marks are now being advertised for opposition purposes on the Ministry of Commerce and Industry’s website. Although the opposition procedure is yet to be stipulated and marks are published without filing numbers, date and specification, the Ministry appears to be accepting oppositions filed by letter.

Regarding the validity of registrations obtained under this procedure, a new Trade Marks Act is expected to contain transitional provisions to provide for the recognition of trade marks filed prior to this new Act coming into force.

We recommend that trade mark owners consider filing applications for the registration of their trade marks in Somalia to avoid unscrupulous third parties doing so before them.

In the meantime, it is still possible to publish Cautionary Notices for trade mark owners simply wishing to give notice of their trade mark rights to third parties without obtaining registration.

Kenya’s Industrial Property Institute (KIPI) recently initiated the “Trade Marks Registry Upgrading Project” to rid its Trade Mark Register of all unwanted trade mark registrations. KIPI has mounted an assault on trade marks which have not been renewed in time by their proprietors.

In pursuit of this initiative, KIPI has published Special Industrial Property Journals listing such lapsed registrations. The first journal was published on 15 June 2020 containing about 2,000 marks, the second published on 15 December 2020 containing about 2,600 marks and a third on 15 February 2021 containing about 2,500 marks. This brings the total marks set to be removed from the Register to over 7,000. The journals have all been uploaded onto KIPI’s website: www.kipi.go.ke

In terms of these special journals, the proprietor of a lapsed registration has 30 days from publication to have it renewed by paying the prescribed renewal and late renewal fees. On expiry of the 30-day period, any lapsed registrations not renewed shall be removed from the Register. A proprietor of a removed lapsed registration will still have the opportunity to have their registration restored.

KIPI also mentioned in a Public Notice issued on 21 December 2020 that it is sending notices regarding non-renewed marks to the proprietors, but we recommend that trade mark owners still be vigilant and check the journals or instruct their trade mark attorneys to do so to ensure that none of their marks are inadvertently included.

As anticipated as long ago as 2016, Mozambique finally acceded to the Banjul Protocol (which provides for trade mark registration at ARIPO), bringing the membership of this Protocol up to eleven countries.

According to ARIPO, Mozambique deposited its Instrument of Accession with ARIPO on 15 May 2020. It is therefore possible since 15 August 2020 to designate Mozambique in ARIPO trade mark applications.

As Mozambique’s Industrial Property Code of 2015 already makes provision for recognising ARIPO registrations, there should not be any doubt about the enforceability of such registrations in Mozambique. It remains to be seen whether ARIPO applications designating Mozambique will be examined within the allowed timeframe and on the same level as national applications.

This positive development simplifies the acquisition of registered rights in Africa for trade mark owners. We await the accession of other countries that we are expecting to join soon, particularly Mauritius which has already joined the overarching ARIPO agreement.

Every year the ARIPO Secretariat (ARIPO’s governing body) invites stakeholders to submit proposals for improving the ARIPO Protocols, which are considered at a Working Group session held at ARIPO’s headquarters in Harare, Zimbabwe, in May. The proposals approved by the Working Group are put forward to the Technical Committee on Industrial Property for consideration and finalisation, and then tabled at the Administrative Council meeting in November for approval.

For a few years there have been requests for clarifying the opposition procedure for ARIPO applications, but the Working Group and Technical Committee both had difficulties on formulating an appropriate procedure and drafting the necessary amendments.

In 2019, the Secretariat finally formed a proposal that was acceptable to both the Working Group and Technical Committee, and introduced a new rule into the Banjul Protocol at the start of 2020 to provide for the procedure for lodging notices of opposition directly with ARIPO.

Substantively, oppositions are still being dealt with in terms of the laws of the relevant member state(s), but this procedure change for lodging oppositions is important.

All of these meetings have taken place virtually during 2020 and are likely to be virtual in 2021, and the ARIPO office remained functional throughout the various lockdowns in Zimbabwe due to its excellent digitisation, online filing and data management capabilities.

The legal systems for protecting IP in Africa are becoming increasingly sophisticated and efficient and more and more Registries are digitising and moving to electronic filing systems. Africa is fast becoming a prime target for companies wishing to expand their business offerings and obtain corresponding protection for their IP.