Africa in General
Trademark clearance searches
Not yet digital
There are still countries in Africa that have not yet digitized their trademark records. These are: Burundi, DRC and Sierra Leone.
It may be digital, but is it complete?
The answer is no - in the following African countries, electronic searches need to be supplemented by manual searches: Ghana, Nigeria, Sudan, Tanzania and Zimbabwe.
Restricted access to electronic databases
In both Nigeria and Tanzania access to the electronic database is restricted - in the case of Nigeria the electronic register is incomplete, whereas in Tanzania only Tanzanian nationals can access the records.
Madrid not showing
Ghana and Sierra Leone both belong to the Madrid Protocol, yet international registrations designating these countries do not appear in the national databases.
Examination for prior rights
Prior rights examination does not occur in all of Africa, but it does in the following countries and regions: Angola, Burundi, DRC, Ethiopia, Gambia, Kenya, Madagascar, Malawi, Mauritius, Mozambique, Nigeria, OAPI (see below), Rwanda, Sierra Leone, Sudan, Tanzania, Uganda (where a pre-filing search is mandatory), Zambia and Zimbabwe.
OAPI is the regional registration system that covers the following countries: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea (Conakry), Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo.
Things can be tricky in…
Madagascar, where the only recourse to a Registry refusal is an appeal to a court of first instance, followed by a final decision by an appeal court. Also in Sudan can be difficult, where a Registry refusal is referred to a court.
Journals
In Africa there is often a long delay between filing and publication - 24 months is not uncommon. This can make relying on published applications risky in the following countries and regions: Ethiopia, Ghana, Nigeria, OAPI, Uganda, Zambia and Zimbabwe.
GHANA
A new IP Office
During 2023 the Ghanaian authorities published an important bill, the Ghana Industrial Property Office Bill, 2023 (the Bill).
The Bill
The purpose of the Bill is to establish a new IP Office, the Ghana Industrial Property Office (GHIPO).
The GHIPO will administer the use and protection of patents, trademarks, industrial designs, geographical indications and plant varieties in Ghana. Copyright is, however, excluded from the GHIPO's ambit - copyright is administered by a separate entity, the Copyright Office.
KENYA
Anti-counterfeiting measures
Lawyers who have been involved in IP matters in Kenya will know that things are a little different in the East African country. Kenya has a serious counterfeiting problem, but it has taken (and is continuing to take) steps to deal with the problem. Kenya is one of those rare countries that has dedicated anti-counterfeiting legislation, the Anti-Counterfeiting Act No. 13 of 2008. Kenya also has a dedicated anti-counterfeiting body, the Anti-Counterfeit Authority (ACA).
A dual registration system
Even more remarkably, Kenya has what is sometimes described as a "dual registration system", one that requires trademark owners to separately record their trademark registrations with the ACA (and renew these recordals annually), in order to better enable the ACA to identify and seize counterfeit goods entering the country - for obvious reasons trademark registrations that simply cover services do not require recordal. Trademark recordal with the ACA involves the issuance on an annual basis of a "certification mark" in the form of an anti-counterfeit security device - goods exported to Kenya and not bearing the device will be destroyed.
The issue of the dual registration system has been widely discussed. Companies with trademark registrations in Kenya would be well advised to seek legal advice on the ramifications of the dual registrations requirements.
Counterfeiting and national defence
The ACA enjoys high public profile in Kenya, and it is often in the news. In September 2023 the ACA announced that it would be collaborating with the National Defence University-Kenya (NDU-K) - an ACA posting dated September 6, 2023 explained that NDU-K is "recognized as the Defence Forces of Kenya University specializing in defence and security studies". The posting further told us that the discussions between the two institutions had focused on "understanding counterfeiting trends and leveraging NDU-K's capabilities in training and intelligence gathering". It went on to say that the collaboration "seeks to ensure counterfeiting and illicit trade do not endanger the country".
There is clearly something of a military tone to this, one that suggests that the Kenyan authorities take the view that the country is involved in a war with counterfeiters.
A matter of collaboration with business
In a 2023 posting, the Kenya International Freight and Warehousing Association (KIFWA) announced that it has agreed to strengthen collaboration with the Kenyan government in its quest to combat trade in counterfeit goods - the announcement followed a meeting between the Executive Director of the ACA, Dr. Robi Mbugua Njoroge, and the National Chairman of KIFWA, Mr. Roy Mwanthi. The meeting took place in Mombasa, a port city through which much of Kenya's international trade passes.
The posting suggest that there is increasing recognition in Kenya that regulation and collaboration are needed to ensure integrity by the shippers and logistics providers. KIFWA's national chairman, Roy Mwanthi, has seemingly made it clear his organization's members are ready to collaborate with government agencies in order to comply with the law and promote legitimate trade. Such collaboration will no doubt be very welcome!
LIBYA
Trademark Office resumes "normal" operations
With effect from November 11, 2022 the Libyan Trademark Office limited the service that it offers to trademark applications filed by Libyan nationals and companies - it's not entirely clear what the rationale for this step was, although it is our understanding that some internal changes were being introduced at this time.
On May 28, 2023, however, the Trademark Office resumed normal operations - it is worth pointing out that there was apparently a resumption in operations some time in February, but this was short-lived. The upshot is that since May 28, 2023 it has again been possible for foreign nationals and companies to register or renew their trademarks in Libya. As far as we know no ministerial decree confirming this change has been published.
From a procedural perspective, the requirements are as follows:
- A legalized power of attorney and a company registration document must accompany the application - late filing of these documents is only allowed for applications claiming priority, and;
- Legalized documents must follow within forty days from the date of the application.
THE MADRID PROTOCOL IN AFRICA
The Madrid Protocol makes international trademark registration simpler and cheaper. In effect, what is required is for the trademark owner to file a domestic (home) application, and subsequently file with WIPO an application for an international registration (IR), designating those Madrid Protocol member countries that it wishes to cover. WIPO examines the international application for formalities, but examination on merits (like distinctiveness) is left to the registries of the designated countries.
A few observations
Madrid has real fans in Africa
The Madrid Protocol is popular in Africa. The following countries and regional organization are members of the Madrid Protocol: Algeria, Botswana, Cabo Verde, Egypt, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, OAPI (the regional system covering most of French-speaking Africa), Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Tunisia, Zambia, Zimbabwe.
But not everyone's a supporter
Some of Africa's big hitters have, to date, failed to sign up. The following countries, all of which have (by African standards) significant economies: Angola, Ethiopia, Nigeria, South Africa, Tanzania and Uganda.
International Registrations (IRs) are not effective everywhere
There are Madrid Protocol signatories where IRs are seemingly neither effective nor valid, and where they should probably be avoided: OAPI (regional system), Eswatini, Lesotho, Sierra Leone and Zambia.
Some detail is in order. In the case of OAPI, the problem is that the organization has failed to amend its law, the Bangui Agreement, to accede to the Madrid Protocol - such an amendment would require ratification by member states. Instead OAPI "acceded" by a simple resolution. This is not sufficient.
As regards the four countries - Eswatini, Lesotho, Sierra Leone and Zambia - these are all so-called "common law countries". An international agreement can only become part of the domestic law of a common law country if the agreement is expressly enacted into the national law by an Act of Parliament. This has not happened in the four countries. The effect of this is that an IR cannot be lawfully processed or enforced in any of these countries.
It is perhaps worth noting that there is no so-called "general clause" in any of these four countries' legislation, in other words there is no clause that states that the provision of an international agreement to which the country is a party shall apply in the domestic law.
In some countries IRs can be challenged
There are Madrid Protocol signatory countries where the validity of an IR designation can be challenged: Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Namibia, Sao Tome, Tunisia, Zimbabwe.
Issues of a procedural nature
Certain issues of a procedural nature have come up. These issues relate to the fact that IPAS Madrid Module receives incoming electronic transactions from WIPO and transmits them to the IP Offices of the designated countries and regional system (OAPI). There are some migration anomalies:
A failure to record limitations
One anomaly relates to the fact that the system does not automatically record limitations. For example, a trademark proprietor may request limitations of the goods or services in particular designated countries, yet these goods/services will remain in the IR, and they can indeed form the subject of a later designation. The effect of this is that the national registration does not always reflect the international register.
No Statement of Grant or publication for opposition
It is not always clear whether an IR was indeed granted, and whether it is therefore enforceable under national law. Namibia, for example, does not currently issue Statements of Grant of Protection, nor does it automatically advertise the IR for opposition. It requires the appointment of a local trademark attorney to do so. Where no Statements of Grant of Protection are issued, it may be difficult to prove registered rights for the purpose of infringement proceedings and filing a complaint with Customs.
Provisional refusals
There are time limits for responding to a provisional refusal - in Namibia, for example, the period is 30 days (extendible to 180 days), whereas in Mozambique it is 30 days, with no extension possible. If the IP Office or WIPO delays notification of a provisional refusal, it can make life very difficult for the trademark applicant.
Summing up
In Africa, the Madrid Protocol has been a welcome development. But it's far from perfect.
MAURITIUS
In 2023 Mauritius joined the Madrid and Hague systems.
The Madrid System
Mauritius joined the Madrid System - the Indian Ocean state deposited its instrument of accession to the Madrid Protocol on February 6, 2023, although it only formally entered into force on May 6, 2023. By doing so Mauritius became the 114th member of the Madrid System on the international registration of trademarks.
The practical effect of this is that Mauritian businesses are able to protect their trademarks in much of the world through international registrations, whereas companies in Madrid Protocol countries will be able to include Mauritius in international registrations.
The Hague System
Mauritius joined the Hague System - it deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement on February 6, 2023, although this only formally entered into force on May 6, 2023. By doing so Mauritius became the 70th contracting party to the 1999 Act and the 78th member of the Hague Union.
The practical effect of this is that as of May 6, 2023 it has been possible for many businesses to designate Mauritius in a design application, whereas Mauritian businesses have been able to protect their designs in multiple countries simultaneously.