Africa, albeit a developing continent, offers many opportunities for investment and new business and, along with new investment, goes the need for the registration of trade marks.  Africa is, however, a big continent with over fifty recognised states, so where should a company start when registering trade marks?

When planning to do business in more than one African state, it may not be necessary to have more than one registration.  Firstly, there is the African Intellectual Property Organisation (OAPI or AIPO) where one registration covers Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.  Secondly, there is the African Regional Intellectual Property Organisation (ARIPO), a trade mark application system of which not a lot of use is currently made.

ARIPO was established in terms of the Agreement on the Creation of the African Regional Intellectual Property Organisation, known as the Lusaka Agreement.  The Lusaka Agreement was adopted in Lusaka, Zambia, on 9 December 1976.  ARIPO was established to pool the intellectual property resources of its member countries and to avoid the duplication of financial and human resources.  In terms of the preamble to the Lusaka Agreement, the member states have recognised that there are advantages to be derived from the “effective and continuous exchange of information and the harmonisation and co-ordination of their laws, policies and activities in intellectual property matters”.

ARIPO’s objectives are to promote the harmonisation and development of intellectual property laws and to establish common services necessary for the co-ordination, harmonisation and development of intellectual property activities affecting its members.  In line with these objectives, the Banjul Protocol on Marks was adopted on 19 November 1993.

The Banjul Protocol provides for the registration of trade marks by ARIPO on behalf of its member states.  The applicant can choose which of ARIPO’s member states to designate in the application.  Registration of a trade mark by ARIPO has the same effect as if the trade mark was filed and registered under the national law of each designated state.  One registration can in theory accordingly cover several territories.

ARIPO has 19 member states but only 9 countries have acceded to the Banjul Protocol.  An applicant therefore has a choice of nine countries which it can designate in its application for registration.  These countries are Botswana, Namibia, Uganda, Lesotho, Liberia, Swaziland, Zimbabwe, Malawi and Tanzania (Tanganyika).  If a member state subsequently accedes to the Banjul Protocol, the Protocol provides that a registrant or applicant has the right to designate that state.

One ARIPO registration can in theory accordingly cover several territories.  In practice, however, only Botswana, Zimbabwe, Liberia and Namibia have national legislation which recognises ARIPO trade mark applications.  In the 2006 case of Anglo Fabrics (Bolton) Ltd and Another v African Queen Ltd and Another (HCT-00-CC-CS-0632-2006) the High Court of Uganda inferred that it would recognise trade marks registered under international protocols like the Banjul Protocol, to which Uganda is a member state, as long as Uganda was a designated country for purposes of registration.

ARIPO registrations are accordingly recognised in Botswana, Zimbabwe, Liberia, Namibia and, it appears, Uganda but that leaves several states which do not have national legislation which recognises ARIPO trade mark applications.  These states are at various stages of drafting and implementing the required legislation.  Although a company can designate nine countries in an ARIPO application, therefore, the registration may only be enforceable in five countries.

Given that there are so few member states in which rights flowing from ARIPO registrations can be enforced, is an ARIPO registration worthwhile?  The answer to that question depends on whether a company wants to take the risk that the remaining member states will eventually accede to the Banjul Protocol and/or implement national legislation recognising ARIPO trade marks.

If all ARIPO’s member states acceded to the Banjul Protocol and implemented national legislation recognising ARIPO trade marks, the ARIPO system would be the first port of call when considering registering trade marks in Africa.

For more information, please contact:

MYRA CRAVEN
Attorney
Department: Trade Mark
Tel: +27 11 324 3119
Email: myrac@dmkisch.com

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.