INTELLECTUAL PROPERTY IN AFRICA: AN OVERVIEW

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1 May 2016 INTELLECTUAL PROPERTY IN AFRICA: AN OVERVIEW The economic significance of Africa is growing. This article looks at how companies that have interests in Africa can protect and enforce what is often their most valuable asset - their intellectual property. 1. Africa: an introduction Africa is the world s second largest continent and it comprises 54 independent states. The continent is home to more than a billion people, some 14% of the world s population. As a result of colonisation, Africa has many English-speaking countries, such as Kenya, Uganda, Nigeria, Ghana, Zambia, Zimbabwe and South Africa these countries are sometimes referred to as common law countries, and the relevance of this will become apparent later. The continent also has many French-speaking countries, sometimes referred to as civil law countries examples include the Democratic Republic of Congo, Cameroon, Ivory Coast and Mali. The size of the African economy has more than trebled since the year Nine of the world s 15 fastest growing economies are in Africa, and the International Monetary Fund s latest growth forecast for Africa is 4.5%. Although much of Africa s growth has been fuelled by commodities, consumer spending is also starting to play a significant role. Foreign direct investment into Africa is also on the rise. Nigeria, which is Africa s most populous state, has a Gross Domestic Product (GDP) in excess of US$510 billion, making it Africa s largest economy. South Africa, with a GDP of approximately US$370 billion, is the second largest. 2. Intellectual property protection in Africa Africa offers an interesting (and perhaps confusing) mix of national, regional and international registration systems. National registration systems Most of the countries in Africa have national registration systems, in other words systems whereby intellectual property owners can register their rights directly in those countries. The countries that belong to the OAPI regional registration system, however, do not have national registration systems. The OAPI system is discussed next. Regional registration systems A particular feature of intellectual property in Africa is the presence of two regional registration systems.

2 OAPI The best-known of the regional registration systems is one that applies in much of Frenchspeaking Africa. It is known by the French name Organisation Africaine de la Propriété Intellectuelle, or more commonly by its acronym OAPI. The following countries belong to OAPI: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros. It is possible to register OAPI patents, registered designs and trade marks. The most important feature of the system is its unitary character. By this we mean that a single filing automatically covers all the OAPI member countries OAPI member countries do not have their own intellectual property systems, so it is not possible to get a national registration in any OAPI member country. The OAPI system has been around for many years and it works well. However, it is advisable to note our later comments regarding OAPI s recent decision to join the international trade mark registration system (the Madrid Protocol). ARIPO The second regional registration system is the African Regional Intellectual Property Organisation, or ARIPO. This system applies in much of English-speaking Africa. The member countries are: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome e Principe, Sierra Leone, Sudan, Swaziland, Uganda, United Republic of Tanzania, Uganda, Zambia and Zimbabwe. The ARIPO system covers patents, registered designs and trade marks, although only half the member countries offer ARIPO trade mark protection. An interesting recent development is that ARIPO has agreed to extend the system to cover the protection of new varieties of plants. ARIPO differs from OAPI in that it is not a single filing system, but rather a designation system. What this means is that applications are filed at a central office, and the applicant designates those member countries that it wants covered. The cost of the filing is dependent on the number of countries designated. Each individual intellectual property office has an opportunity to refuse protection in its own territory within a period of 12 months. Each member country also offers the option of national registrations. Although ARIPO works well for patents, it does not work well for trade marks. One reason for this is that there are some major procedural discrepancies between the ARIPO system and the trade mark registration systems of some of the member countries. A second reason is that many of the ARIPO member countries are what we referred to earlier as common law countries. A feature of common law countries is that they need to pass legislation before an international treaty becomes part of their law - this is in contrast to civil law countries, where an international treaty automatically becomes part of the national law as soon as the treaty is ratified. Certain ARIPO member countries have failed to make the agreement that relates to ARIPO trade marks part of their domestic laws. As a result there are doubts about the validity and enforceability of ARIPO trade mark registrations in the following countries: Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania and Uganda. Because of these problems, few companies file ARIPO trade mark applications.

3 International registration systems Most African countries have signed up to the major international intellectual property agreements, such as the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), the World Intellectual Property Organisation (WIPO), the Paris Union and the Berne Convention. Many African countries also belong to the Patent Co-operation Treaty (PCT), with the result that inventions can be protected in Africa by way of PCT filings. A number of African countries also belong to the Hague System regarding the international registration of designs. The international agreement that has been most in the news of late, however, is the Madrid Protocol regarding the international registration of trade marks. Madrid Protocol The following African countries now belong to the international trade mark registration system: Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe. What this means is that companies that are based in countries that belong to the Madrid Protocol can use the international trade mark registration system to get protection for their trade marks in any or all of the 19 countries mentioned above. There are, however, some real problems with international trade mark registrations in Africa: Poor administration A number of the African countries that belong to the Madrid Protocol are unable to administer the system properly, and comply with the time limits that the system imposes. As a result, International Registrations become valid in these countries by default and it is possible that these registrations could be challenged. Common law countries As with ARIPO, there are concerns involving common law countries. In this case the concerns relate to the fact that a number of the common law countries that have joined the international trade mark registration system have never formally incorporated the Madrid Protocol into their national laws. As a consequence, there are doubts as to whether international registrations are valid and enforceable in these countries. The countries involved here are: Liberia, Namibia, Sierra Leone, Swaziland, Zambia, Zimbabwe and, to a lesser extent, Ghana and Sudan. There is a third problem with the international trade mark registration system in Africa, and this relates to OAPI. The OAPI problem. OAPI recently signed up to the Madrid Protocol as a regional member. This means that, in addition to the 19 Madrid Protocol member countries mentioned earlier, trade mark owners can also cover all 17 OAPI member countries in an international registration by simply designating OAPI in an application for an international registration. There are, however, real doubts about whether OAPI lawfully joined the Madrid Protocol. This relates to the fact that OAPI s accession to the Madrid Protocol was done by way of a resolution of the body s Administrative Council, rather than by way of an amendment to the document that founded the OAPI union, the so-called Bangui Agreement. Many lawyers believe that OAPI s accession to the Madrid Protocol by way of a simple resolution was invalid. They believe that OAPI designations of international registrations will therefore not be valid or enforceable. There is an intense debate going on around this issue at the moment, and there is a good chance that the

4 matter will end up in a court of law. Until such time as there is more clarity we believe that there are risks attached to covering OAPI through international registrations. For various reasons, therefore, trade mark owners should be wary of using the international trade mark registration system in Africa. 3. Recent developments in IP It is encouraging to note that intellectual property laws are constantly being updated in Africa. Over recent years we have seen legislative changes in a number of countries. It is also gratifying to see IT improvements, with both Nigeria and ARIPO announcing that they are going online. Here are a few noteworthy recent developments: Egypt The Egyptian Patent Office and the Japanese Patent Office (JPO) recently agreed to start a Patent Prosecution Highway pilot program, in order to speed up patent grant procedures in Egypt for Japanese companies. It is now possible for a Japanese company, whose Japanese patent application has been found to be patentable by the JPO, to request accelerated examination of its corresponding Egyptian patent application. Morocco The law in Morocco was recently changed to make provision for the substantive examination of patent applications, the substantive examination of trade mark applications, and provision for registering designs and models. The intellectual property office in Morocco also recently signed an agreement with the European Patent Office (EPO), allowing for the validation of European patents. As a result, it is now possible to designate Morocco in a European Patent application, or a Patent Co-operation Treaty (PCT) application designating Europe. A European patent validated in Morocco has the same legal effect in Morocco as a Moroccan patent, and it is subject to Moroccan patent law. South Africa The South African authorities recently announced that the South African patent system will change from a deposit system to an examination system, although the implementation of this plan is likely to take some time. In 2015 the authorities also proposed sweeping changes to copyright law. These changes will do many things but, most importantly, they will bring South African copyright law into the electronic age. Seychelles The law was recently changed to do away with the re-registration of UK and European (UK) patents, make provision for the registration of utility models, make provision for the registration of unusual trade marks such as three-dimensional marks, and make design protection available in Seychelles. Tunisia Tunisia has signed a patent validation agreement with the EPO, similar to the one that Morocco has signed. In the case of Tunisia, however, the agreement still needs to be ratified by the legislature.

5 4. Enforcement of intellectual property rights and, specifically, anti-counterfeiting measures Counterfeiting is particularly problematic in Africa, with the World Health Organisation (WHO) estimating that some 30% of the pharmaceutical market in Africa is counterfeit. It is no surprise, therefore, that we see increased anti-counterfeiting measures featuring prominently in much of the new intellectual property legislation in Africa. Here is a brief overview of some of the measures that exist: South Africa South Africa has led the way in Africa when it comes to anti-counterfeiting, and it introduced anticounterfeiting legislation back in The legislation has important practical consequences. It is a valuable evidence-gathering tool, because it effectively gives the trade mark owner access to the resources of the state - the trade mark owner can request the police and customs authorities to search premises (including airports and harbours) where it suspects that counterfeit goods are being stored or entering the country, and seize those goods so that they can be used in evidence in civil proceedings for trade mark infringement. The legislation also creates various criminal offences with stiff penalties, including fines and prison terms. Angola Angola recently introduced substantive changes to its copyright law. From an enforcement point of view, there is now provision for the seizure of infringing goods whilst legal proceedings are under way, as well as for damages and the destruction of infringing material and equipment used in an infringement. Ghana Ghana recently amended its trade mark law. What is interesting from an enforcement point of view is that various forms of intentional trade mark infringement are now criminal offences. People charged with such offences will not even be entitled to bail in cases where certain industries are involved. The law further provides that, in cases where possible criminal offences are being investigated, a court can order forfeiture and destruction of goods. Kenya Kenya has specific anti-counterfeiting legislation: it creates presumptions in favour of the intellectual property owner; it creates an Anti-Counterfeit Agency; it provides for the seizure and detention of goods; and it lays down harsh penalties for infringers, including five-year imprisonment terms. The Kenyan authorities have also decided to amalgamate a number of intellectual property bodies in an attempt to cut bureaucracy and improve co-operation in enforcement measures. Morocco In 2014 Morocco changed its intellectual property law. The new law has a number of special provisions that tackle counterfeiting, for example: the customs authorities have the power to detain counterfeit goods that are in transit; the presiding judge in an infringement case has the power to order the seizure of goods; and there is provision for longer prison terms and heavier fines for infringers. Tanzania In 2008 Tanzania passed regulations that were hailed as a significant step against counterfeiting and piracy. These regulations provide for the appointment of a task force and a Chief Inspector, powers of detention and seizure of goods, asset-freezing orders, and criminal prosecutions.

6 Uganda The Ugandan authorities have introduced a specific anti-counterfeiting bill, but this is not yet in force. Uganda s new Industrial Property Act 2014 is being applied even though no regulations have been promulgated. Interesting features include the fact that PCT international and national phase applications are recognised, pharmaceutical products are excluded from patent protection until 1 January 2016 or such longer period as may be granted to least developed countries, utility models are provided for, and UK industrial design registrations no longer automatically extend to Uganda. Zambia In Zambia there is an intellectual property bill that is not yet in force. This bill specifies a five-year prison term for counterfeiting, and it has provisions dealing with border seizures of counterfeit goods. 5. Conclusion Africa provides comprehensive protection for intellectual property rights, but registration can be complex because of the various systems that exist, and the problems that sometimes come with these systems. Africa is also taking enforcement far more seriously than it did in the past. This is good news, because it means that the intellectual property rights that companies have are not simply theoretical.