Demystifying Africa: Considerations for a Trade Mark Filing Strategy in Africa

When asked about their trade mark filing strategy in Africa, many in-house counsel reply that Africa is too big and complex and they do not know where to start. Even those who know a little about Africa are cautious about filing in Africa due to the perceived political instability, corruption and poor infrastructure, language and cultural difficulties and inefficiencies in the services offered by the various trade mark registries.

Fortunately, there has been more focus lately on the opportunities offered in Africa, with a number of these negative perceptions either being expelled by a glimpse into how African countries actually operate, or by the negatives being outweighed by the positive growth prospects for businesses in Africa. Many successful businesses have learnt how to overcome the challenges faced and turn their African expertise into a competitive advantage.

For those businesses wanting to embrace Africa, outlined below are some general practical considerations as well as a possible strategic approach for filing trade marks in Africa.

1) The cost of filing vs trying to enforce use rights

A common problem throughout Africa is trade mark squatters filing applications for trade marks found in trade (or seen overseas) in order to extort money from the true proprietor for the transfer of the trade mark. Although some countries have provisions that allow for the opposition or cancellation of such bad faith trade marks, this can be a protracted and costly procedure in Africa.

The cost of filing trade mark applications in Africa is generally much lower than opposition or cancellation proceedings, therefore it is advisable to rather file a trade mark early than come up against a trade mark 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, which means that even if the application by the trade mark squatter was filed in bad faith and in conflict with the rights of the true owner of a trade mark, it may not be possible for the true proprietor of the mark to oppose or cancel such a registrationbased on prior use or their well-known trade mark.

3) How long it will take to get registration vs how long you intend using the mark

There is a general perception that registries in Africa are inefficient and that the trade mark registration process is lengthy. While this may be true in some countries, it is not the case in most. In Burundi, Djibouti and Liberia the registration certificates are usually issued within 1-3 months from filing in a straightforward case, in OAPI it generally takes 6-9 months and in ARIPO 12-18 months. Many registries are now computerised due to assistance from the World Intellectual Property Organisation (WIPO) and examiners are well-trained in trade mark matters, with the result being that the registration process is becoming more efficient and inaccuracies are reduced.

Brand owners do, however, need to consider the length of the registration process in any given African 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

There is also a general misconception that it is impossible to enforce trade mark rights in Africa because the courts and registry tribunals are inefficient and inexperienced in trade mark disputes. Again, while this can be true in some countries, infringement and/or opposition matters are being handled quickly and efficiently in various African countries, including Kenya, Mauritius, Nigeria and OAPI. 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

Due to its history of colonisation there are numerous languages spoken in Africa, including French, Portuguese and Arabic. Consumers in the French, Portuguese and Arabic speaking African countries are more likely to have a demand for products from the relevant European and Arabic country and it simplifies the marketing of products from these countries as packaging and marketing materials do not need to be translated prior to export.

An African country with a common language and heritage is therefore an easy point of entry for a European or Arabic company wishing to expand its operations in Africa, and should accordingly be considered a priority for obtaining trade mark protection.

6) Big industries in Africa

There are certain industries that are growing very fast in Africa, including fintech, mobile money, and electronics. Fast-moving consumer goods are also in high demand, especially in Nigeria with its growing upper-middle class. Brand owners active in these industries should therefore prioritise Africa in its filing strategy.

While there could be some overlap between the countries that fall in the categories discussed below, the following is a rough guide on 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 bearing its trade mark are already available in the marketplace, it is very important to get an application on file as soon as possible in order to be the first to file and ensure a trade mark squatter does not file a bad faith application first.

2) File in South Africa and the other Southern African Customs Union (SACU) countries

Many international brands wishing to expand into Africa start with filing trade marks in South Africa as it is generally considered to be the gateway to Africa due to its geographic advantages and logistics infrastructure. The filing costs are also reasonable and the enforcement of marks is effective.

Closely thereafter should follow the so-called Southern Africa Customs Union (SACU) countries, which (together with South Africa) are Botswana, Lesotho, Namibia and Swaziland (now called eSwatini).

This is particularly important as the SACU treaty provides for the easy movement of goods between the member countries and as such goods distributed in South Africa could easily find their way to one of these countries where there may be no trade mark protection in place.

Although Mozambique and Zimbabwe are not members of SACU, filing applications in these two neighbouring countries is also advisable due to their close proximity and 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, namely OAPI (Organisation Africaine de la PropriétéIntellectuelle) and ARIPO (African Regional Intellectual Property Organization), available which would give a brand owner protection in a number of countries through just one application in each territory.

OAPI is a union of 17 mostly French-speaking West-African countries that covers Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

Member states are required to abolish their national trade mark laws when they join OAPI and as such the only way of obtaining trade mark protection in these countries is through OAPI, which is headquartered in Yaoundé, Cameroon.

While oppositions are also handled centrally by the OAPI Trade Marks Office, enforcement is still handled by the national courts of the member state involved.

Unlike OAPI, one registration with ARIPO does not automatically cover all the member states and member states must be designated in an application that would only cover the designated states. The 11 states that can currently be designated in an ARIPO trade mark application are Botswana, Lesotho, Liberia, Malawi, Mozambique, Namibia, Sao Tome & Principe, Swaziland (now called eSwatini), Tanzania, Uganda and Zimbabwe, although there are some other countries in the process of joining. In particular, Kenya has already amended its national laws to provide for the recognition of ARIPO registrations once it accedes to the Banjul Protocol (the treaty that regulates the registration of trade marks with ARIPO).

It should be noted that out of the current member states, only Botswana, Liberia, Malawi, Mozambique, Namibia, Sao Tome & Principe and Zimbabwe have incorporated the provisions of the Banjul Protocol into their national laws. The other member states do not have formal legislation in place to recognise ARIPO registrations and as such the enforceability of an ARIPO registration in these countries is still uncertain.

There are however general provisions in the laws of Lesotho and Swaziland (eSwatini) that provide for international treaties to which these countries are parties to apply automatically. There was also a recent case decided in Uganda in which the judge inferred that ARIPO registrations that designateUganda would be enforceable.

OAPI and ARIPO applications are a cost-effective and efficient way of covering a number of African countries in one filing, so these two systems are a good option for brand owners starting out in Africa.

4) File in countries with large economies:

Finally, we recommend that brand owners consider those African countries with the biggest economies. The countries with the biggest economies (in order from highest to lowest) are Nigeria, South Africa, Egypt, Algeria, Morocco, Kenya, Ethiopia, Angola, Ghana and Tanzania (Source: IMF).

In our experience these territories (along with Uganda and OAPI) are of most interest to brand owners.

We would therefore recommend filing national applications in those countries that are not already covered by the regional filing system above.

Africa consists of 54 separate countries, each with its own idiosyncrasies and practicalities. Although deciding where to file in Africa may seem daunting (and expensive), there are professionals that can assist with devising a strategy and other tools and systems available to help brand owners make these decisions.