Many consider the African continent to be so complex that they do not know where to start when considering a filing strategy. Others fear the perceived political instability, corruption and inefficiencies in the services offered by the various trade mark registries. However, these negative perceptions are being expelled and outweighed by the growth prospects for businesses in Africa.
Ready to embrace Africa? Outlined below are some practical considerations and strategic approaches for filing.
General practical considerations
1) The cost of filing vs trying to enforce use rights:
A common problem throughout Africa is trade mark squatters. They file applications for trade marks found overseas, to extort money from the true proprietor for the transfer of the trade mark. Some countries have provisions that allow for the cancellation of such bad faith trade marks but this can be a costly procedure.
In contrast, the cost of filing trade mark applications is lower. Rather file a trade mark early than come up against a squatter.
2) It might not be possible to enforce use rights or well-known trade marks:
Many African countries follow a first-to-file system, meaning that even if the application by the trade mark squatter was filed in bad faith, it may not be possible for the true proprietor of the mark to oppose or cancel such a registration.
3) How long it will take to get registration vs how long you intend using the mark:
Brand owners need to consider the length of the process in the relevant country versus the life span of the product or service bearing the trade mark. It may not be worth filing trade marks for products or services with a short life span or for slogans used in temporary advertising campaigns.
4) In many countries the courts and registries work well:
Infringement and/or opposition matters are being handled quickly and efficiently in various African countries, including Kenya, Mauritius, and Nigeria. Regulatory intervention by government agencies is also an attractive and cost-effective way to enforce IP rights in some African countries.
5) Language and cultural considerations:
There are numerous languages spoken in Africa, including French, Portuguese and Arabic. Consumers in these speaking African countries are more likely to have a demand for products from other same speaking countries, and the common language also simplifies the marketing and packaging of products for export.
6) Big industries in Africa:
Fastest growing economies include fintech, mobile money, and electronics. Fast-moving consumer goods are also in high demand, especially in Nigeria with its growing upper-middle class.
Strategic approach
Where to start when setting up your filing strategy:
1) File in your active countries immediately:
If a brand owner is already active in any African country or products are already available in the marketplace - get an application as soon as possible to be the first to file.
2) File in South Africa and the other Southern African Customs Union (SACU) countries:
Many international brands start with filing in South Africa due to its geographic advantages and logistics infrastructure. Filing costs are reasonable and enforcement of marks is effective.
Thereafter, the Southern Africa Customs Union (SACU) countries: Botswana, Lesotho, Namibia and eSwatini. This is particularly important as the SACU treaty provides for the easy movement of goods between the member countries.
Although Mozambique and Zimbabwe are not members of SACU, filing in these neighbouring countries is advisable due to the frequency with which people and goods move from South Africa into these countries.
3) File through the regional systems available. There are two regional filing systems available in Africa:
OAPI (Organisation Africaine de la Propriété Intellectuelle)
Covers 17 mostly French-speaking West-African countries: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
An OAPI application automatically designates all member states and it is not possible to designate only some of the member countries.
ARIPO (African Regional Intellectual Property Organization)
The 12 member states are Botswana, The Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, Sao Tome & Principe, eSwatini, Tanzania, Uganda, and Zimbabwe.
One registration with ARIPO does not automatically cover all the member states. Member states must be designated at the time of filing the application.
4) File in countries with large economies:
Finally, we recommend that brand owners file in those African countries with the biggest economies.
In closing, Africa consists of 54 separate countries, each with its own idiosyncrasies and practicalities. Although deciding where to file in Africa may seem daunting, there are professionals that can assist with devising a strategy using the tools and systems available to help brand owners make these decisions.
