How covid-19 has hit anti-counterfeiting in Africa and what brand owners can do to fight back

The pandemic and related effects of lockdown have had a big impact on the continent’s IP ecosystem. Vanessa Ferguson, anti-counterfeiting specialist and trademark attorney, runs through some of the most significant upheavals and sets out what rights holders should do to safeguard their brands

• As covid-19 restrictions begin to ease, brand owners need to reassess their anti-counterfeiting strategies in Africa.
• Given the growth of cross-border trade during the pandemic, a regional rather than country focus could be a smarter option.
• The role of Customs remains paramount given that most fakes are imported into Africa, rather than manufactured there.

Africa – a continent of 54 countries and 1.3 billion people, with a young population, growing consumer market and a rapid movement towards mobile inclusion and connectivity – is providing exciting investment opportunities for local and foreign businesses alike. However, this increased investment is also making the continent an attractive market for counterfeiters, pushing the urgency of protecting and enforcing IP rights.

Add to the mix the impact of covid-19 on the development of IP enforcement and anti-counterfeiting measures and the fact that some lockdown measures have in fact created new opportunities for infringers and it becomes clear that brand owners need to take a fresh look at their IP strategies in Africa – and fast.

How lockdown opened new routes

Several governments in Africa – including those in Botswana, Eswatini, Kenya, Lesotho, Namibia, South Africa and Zimbabwe – implemented a variety of policies regarding alcohol and tobacco in the wake of the pandemic, including outright bans or limits on the sale and distribution of such goods. In South Africa, for example, initial lockdown measures stipulated that trade should be restricted to essential goods only. However, a national ban on the sale and distribution of alcohol and cigarettes has had the unintended consequence of fuelling the illegal trade in counterfeits, both within the country and through cross-border trade with neighbouring countries.

Although these prohibitions have now been lifted, damage has already been done and illicit trade routes have been given a significant boost. Such networks are now being increasingly used for the cross-border trade of other counterfeit goods. One knock-on effect of this growth is a sharp rise in the volume of smaller individual consignments going through already under-resourced border control points.

Informal cross-border trade is a source of income for about 43% of Africa’s population. What is more, measures taken to contain the pandemic have undone years of economic growth, with unemployment rates climbing in countries across the continent. For instance, unemployment in South Africa currently stands at an all-time high of 32.5%. Again, this has resulted in an uptick in informal trading and, unfortunately, a rise in criminal activities.

Re-routing and transit strategies

Re-routing is a common strategy used by counterfeiters and infringers to avoid customs detection and detention. Brand owners looking to combat this need to cast their nets wider than just the key countries of economic interest.

In Southern Africa, goods destined for the South African market are commonly re-routed through neighbouring ports (eg, the Beira and Maputo ports in Mozambique and the Port of Walvis Bay in Namibia) to avoid detection. The items are then brought through the porous borders of neighbouring countries Zambia and Zimbabwe into the South African market.

A strategy commonly used in East Africa is to label goods as being destined for landlocked countries (eg, the Democratic Republic of Congo), when in fact they are intended for the markets of Kenya, Tanzania or Uganda. Customs rarely inspects goods in transit at the port of entry. As such, mislabelled goods can enter the market completely undetected.

In Northeast Africa, Djibouti – which is strategically located as a Red Sea transit point on the world’s busiest shipping lanes connecting Europe, the Middle East and Asia – provides the principle maritime harbour for imports and exports to and from landlocked Ethiopia.

In the same way, Benin, Cote D’Ivoire and Togo are the main entry points for high volumes of imported goods entering the West African markets of Ghana and Nigeria.

Customs

The role of Customs in any anti-counterfeiting strategy in Africa remains of paramount importance given that most fake goods, as well as labels and components, are imported into Africa, rather than manufactured there.

Current trends indicate that the general size of shipments of counterfeits remains small in order to dodge minimum quantity requirements set by rights holders. Labels and branded components are either imported separately by air or manufactured and printed in Africa, although some indications suggest a rise in the number of African-based factories for the manufacture and assembly of finished products.

Formal customs recordation of IP rights is only effective and available in a handful of African countries, including Algeria, Cote D’Ivoire, Egypt, Kenya, Mauritius, Morocco, South Africa and Tunisia. However, many more countries provide procedures for customs enforcement measures and welcome and encourage participation from rights holders, as well as brand awareness training.

With over 90% of Africa’s imports and exports taking place by sea, a strong focus is required on customs enforcement measures at the ports serving as the main economic hubs and the entry points for landlocked countries. Research conducted by Jovago.com reveals seven main strategic harbours and ports that should be on every brand owner’s radar, namely:

• Durban Port in South Africa, known for being Africa’s most active general cargo port;
• Mombasa port in Kenya, the key gateway to East and Central Africa;
• Djibouti port, which serves as a passage for Ethiopian trade;
• Lagos Port Complex in Nigeria, which serves the largest economy in Africa;
• Abidjan in Cote d’Ivoire, the biggest port in the West African sub-region;
• the Suez Canal in Egypt, providing a crucial link between Europe and South Asia; and
• Tangier in Morocco, one of the largest ports on the Mediterranean.

Regional and cross-border trade routes are well entrenched in the African economy, particularly between major ports and neighbouring landlocked countries. Of Africa’s 54 countries, 16 are landlocked: Botswana, Burkina Faso, Burundi, Central African Republic, Chad, Eswatini, Ethiopia, Lesotho, Malawi, Mali, Niger, Rwanda, South Sudan, Uganda, Zambia and Zimbabwe. Anti-counterfeiting strategies focused on any of these should thus widen their scope to consider the main ports of entry in neighbouring territories.

Customs enforcement measures, although important, are not alone sufficient to curb the import and flow of counterfeits. It is estimated that only between 1% and 2% of imported consignments of goods are inspected, with most infringing goods entering the marketplace undetected. Covid-19 has further affected the number of inspections conducted at borders and ports, due to limits on available personnel. Anti-counterfeiting strategies should therefore include a strong focus on market actions and inspections at neighbouring land borders to address this.

Anti-counterfeiting on a shoestring

Limited capacities and resources are a further obstacle with regard to investigations and support for market action. As a result, the onus is on brand owners to drive and support local investigations. They should also be prepared to arrange and cover the costs of the logistics required for market operations, including the transport and storage of seized goods. A key focus of any good strategy should be to secure the integrity of the chain of evidence and to support police inspectors and prosecutors in order to secure a successful outcome in criminal proceedings.

The illegality of copyright and trademark infringement is recognised in all African countries except Burundi. As such, criminal enforcement measures should be considered in addition to the usual civil proceedings.

The efficiency of criminal actions varies from country to country. A long-term enforcement strategy can increase the knowledge base and confidence of prosecutors and presiding officers alike by establishing and building on legal precedents.

In addition, consideration should be given to administrative actions and regulatory relief mechanisms and support available for sub-standard or non-compliant goods. For example, Nigeria has a number of regulatory bodies that support anti-counterfeiting actions, including:

• the National Agency for Food and Drug Administration Control, a federal agency responsible for regulating and controlling the manufacture, import, export, distribution and sale of food, drugs, cosmetics, medical devices and chemicals in Nigeria; and
• the Standards Organisation of Nigeria, which ensures compliance with product standards.

Retail boom leads to new counterfeiting opportunities

Online retail has been growing rapidly throughout Africa in recent years, bolstered by increased levels of trust in online marketplaces, expanding internet access (primarily through mobile devices) and the modernisation of logistics. E-commerce is also on the up, with Egypt, Kenya, Morocco, Nigeria and South Africa dominating the landscape. The largest pan-African online platform is Jumai, with 31.8 million visits per month from customers in Egypt, Kenya, Morocco, Nigeria and Tunisia. Takealot.com holds the number two spot, with 10 million visits per month, 96% of which are from users based in its home country of South Africa.

As has been the case elsewhere in the world, lockdown measures have contributed to this boom as consumers have shifted their spending online. Naspers reported that in sub-Saharan Africa, the Takealot group reported a 41% surge in revenue from online sales, following the lifting of restrictions on online trading.

Although some larger online platforms in Africa provide mechanisms for takedown notices and removal of online IP infringements, there are limited remedies available to deal with the vast number of counterfeiters creating their own websites and the use of accompanying social media platforms to sell, promote and advertise counterfeit goods with virtual anonymity. In addition, goods purchased from online platforms are usually delivered by private courier companies, making it difficult to trace the online seller’s business operations.

Current law enforcement is not equipped to deal with online-to-offline investigations so as to effectively combat the online trade of counterfeit goods in Africa. Although some preliminary legislative steps have been taken in Nigeria and South Africa (eg, the Nigerian Cybercrimes (Prohibition, Prevention) Act 2015 and the South African Cybercrime Bill), specialist cybercrime units are still needed to handle online counterfeiting effectively.

IP enforcement measures remain the main tool employed by rights holders in Africa to combat counterfeit goods, which require such rights to be registered in the specific country where relief is sought.

Trademark protection may be secured either in terms of national legislative measures or through one of the two regional registration systems available in Africa:

• the African Regional Intellectual Property Organisation (ARIPO); or
• the African Intellectual Property Organisation (OAPI).

Historically, IP protection and enforcement measures have been focused on the biggest economies of Africa – namely, Algeria, Angola, Egypt, Ethiopia, Ghana, Kenya, Morocco, Nigeria, South Africa and Tanzania. However, brand owners should ensure that their IP rights are registered not only in key economic markets but also in neighbouring countries that play a primary role in cross-border trade and the regional transit of goods.

Copycat products, which do not contain the brand name itself, are commonly encountered in the African marketplace. Rights holders should therefore ensure that the get-up of any labels and product packaging is registered as a trademark in the identified territories.

Legal framework

Although the legal framework in Africa is still developing, there is a growing awareness and respect of IP rights. This is being accompanied by a general trend of reviewing and amending IP legislation to comply with international obligations and to provide for effective protection measures.

Many African countries – including Gambia, Ghana, Liberia, Malawi, Mozambique, Namibia, Rwanda, South Africa, Uganda, Zambia and Zimbabwe – have adopted or are in the process of adopting IP policies.

Substantial strides have also been taken in legislative amendments and developments focused specifically on anti-counterfeiting measures in Africa, such as the South African Counterfeit Goods Act 37/1997 and the Kenyan Anti-counterfeiting Act 13/2008. Customs laws and procedures are being enhanced and amended to support customs actions in respect of counterfeits seized at the borders of countries such as Kenya, Lesotho and Mauritius.

Unfortunately, there are only a few established specialised units mandated to deal with counterfeits. These include the Anti-counterfeiting Authority in Kenya, the remit of which is to combat counterfeiting and the trade in counterfeit goods. Kenya is also home to Kilindini Port in Mombasa, which serves the larger East African region and operates within the East African Community Single Customs Territory.

The support and involvement of local and international organisations in cross-border operations, as well as training and awareness initiatives in Africa, is growing and playing an increasingly significant role. A key driver in these efforts is the focus on collaboration between the public and private sector to increase the effectiveness of IP enforcement in Africa.

Efforts focused on customs and border measures have included a collaboration between INTA and the Mauritius Revenue Authority on virtual customs brand awareness training for 13 Southeast African countries and territories: Angola, Botswana, Burundi, Comoros, Djibouti, Kenya, La Réunion (French overseas territory), Madagascar, Mauritius, Rwanda, Seychelles, South Africa and Zambia. In March 2021 the USPTO, together with ARIPO, organised the webinar series “IP Discussions for ARIPO Member States”, which covered topics such as customs and border protection measures.

A key objective is the training and capacity building of law enforcement and government players. The ARIPO-WIPO toolkit on Investigating and Prosecuting IP Crime has been developed and customised by nine ARIPO member state, while the Companies and Intellectual Property Commission’s Training Manual on IP Crime Prosecution for Law Enforcement Authorities and Prosecutors in South Africa is a crucial tool for supporting capacity building and the training of prosecutors and law enforcement officers in South Africa.

Joint operations focused on key counterfeiting supply hot spots, as well as industry-focused operations, have also proven successful in Africa. INTERPOL-coordinated operations such as Operation Opson have focused on counterfeit and sub-standard food and drinks. Meanwhile, Operation Heera, a regional initiative targeting the trafficking of pharmaceutical products in West Africa, resulted in the seizure of 95,800 units with an estimated value of $3.8 million in 2018.

Rights holders are encouraged to join these training and capacity-building initiatives, and to work together with government offices, industry bodies and partner organisations to support joint actions and operations.

Key takeaways

The following valuable lessons have emerged during the covid-19 pandemic that all canny brand owners should bear in mind when creating and implementing an effective anti-counterfeiting strategy in Africa:

• Shift the focus of IP protection and enforcement strategies from one country to the whole region, so as to take account of the cross-border flow of goods between neighbouring territories.
• Customs recordation alone is not sufficient; customs measures should include a continuous programme for capacity building and brand awareness training.
• As far as possible, brand owners should consider a zero-tolerance approach to IP enforcement strategies in order to deal with smaller consignments effectively.
• Increase the focus on inspections, training and capacity building at land borders in order to deal with informal cross-border trade.
• Devote more resources to market investigations and actions targeting intelligence on source and supply, as well as working with local law enforcement to promote skills development and capacity building.
• Demonstrate a long-term commitment to IP enforcement measures, particularly court proceedings, to build the knowledge, capacity and confidence of prosecutors and presiding officers alike.
• Relationships are key to the success of anti-counterfeiting strategies in Africa.
• Collaborate both from an industry perspective and in operations between the private and public sector.
• Encourage knowledge sharing and the development of best practices in both online and offline anti-counterfeiting actions.
• Education and awareness are key to changing the mindset of purchasers of counterfeit goods and increasing respect for IP rights in Africa.

View this article in World Trademark Review here.

By Vanessa Ferguson. Anti-Counterfeiting and Trademark Attorney