26 January 2012

It's time for Africa‏

This week we move to the world's second largest continent, Africa, and explore ways of obtaining trade mark protection here.

In Africa there are 16 countries that are members of the Madrid Protocol. However, this is not as simple as it should be. Botswana, Ghana, Kenya, Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia are usually considered Common Law countries and would require specific legislation to be passed locally in order to recognise Madrid Protocol registrations. This appears to have happened for Botswana and Kenya.

Sudan follows Sharia Law, which is based on legal precedent and analogy and is therefore considered similar to Common Law; it was also previously governed by Britain. For years it piled up Madrid designations but now processes them (and it could be said usually a lot quicker than national filings) and gives at least tacit recognition of them. However, it cannot be ruled out that in the absence of specific legislation amendments that any positive Trade Marks Office and court judgements in favour of Madrid holders could be annulled on appeal.

The Liberian Trade Marks Office has taken it upon itself to follow trade mark legislation that makes reference to Madrid registrations. However, this drafted legislation has not been passed by the Liberian Parliament and so this country represents another case of "proceed with caution". The same can be said of Namibia, which constitutionally should recognise the international treaties it has become a party to, but has yet to implement specific legislation catering for Madrid marks; it has a mixed Civil Law and Common Law legacy from being governed by South Africa.

The other (Civil Law) countries that are members should recognise Madrid marks in the same way as national registrations. These are Algeria, EgyptMadagascar, Morocco, Mozambique and São Tomé and Príncipe. If you can add Botswana and Kenya to this list and you have eight African countries which could be designated in a Madrid Protocol application. Others could be included depending on how you evaluate the risk.

You could definitely argue that an International Registration that is ultimately not enforceable is worthless. However, I'd suggest it could have some value and this is when it comes to searching. The International Register is easily searchable and global companies regularly perform knock-out searches including this Register. They may or may not know if an IR designating, for example, Lesotho, Swaziland and Zambia has doubtful enforceability in these countries but at the earliest stage of their searches they are looking to quickly eliminate a large number of trade mark candidates and this may enable them to do this. I do feel this benefit is not substantial but take into account that the costs of including most countries in a Madrid Protocol application are fairly incremental.

If there is an ability to file through Madrid then this effectively makes the ARIPO route redundant. Those that read a previous blog may recall that only Botswana and Zimbabwe can be safely designated in an ARIPO application so if Botswana is included in a Madrid filing then it's easier to file in Zimbabwe separately.

A single application at OAPI will cover 16 countries of Africa.

There are still a handful of countries where the only trade mark protection available is through the publication of Cautionary Notices. Comoros, Ethiopia, Eritrea and Somaliland fall within this group; Eritrea when such Cautionary Notice publications are allowed.

With the exception of the aforementioned Somaliland region, the situation in Somalia remains perilous and finding out information on the ground is a difficult task. It is believed the Trade Marks Office no longer functions as it has probably been destroyed. Furthermore, the press is fragmented - it is considered very dangerous to be a journalist in Somalia - making the publication of Cautionary Notices nigh on impossible.

The region of Puntland has declared autonomy within Somalia (as opposed to independence like Somaliland). It enjoys a level of stability higher than the rest of Somalia but again it is difficult to arrange publication of Cautionary Notices. According to the monitoring team at the BBC, the region has no local press.

South Sudan, considered the world's newest country, is in a trade mark limbo at the moment whilst it organises the various arms of its government and administration. The authority that will handle trade mark registrations is apparently "reserving" trade marks on behalf of interested parties for the time being. I am not aware of how this works in practice and I was under the impression that it will adopt trade mark legislation comparable to that of (northern) Sudan. This remains unknown along with any possibilities for revalidation and/or obligations to sign up to Madrid, although doubts in enforceability of the latter will persist if the legislation proves to be a simple duplication.

Western Sahara is a disputed territory largely under the administration of Morocco and Moroccan trade mark laws are applied directly. In Morocco it is possible to lodge trade mark applications at a number of cities around the country including some in the territory of Western Sahara.

According to the United Nations, Western Sahara remains a decolonised territory (despite Spanish withdrawal), but in the remainder of the territory – a small slither of land known as the Free Zone – it is thought unlikely that Spanish registrations would provide any protection, even those granted before the Spanish left in 1975. Can Cautionary Notices be published in this area? It is not clear that there is a local press in circulation. Perhaps it is interesting to note that Western Sahara - as the Sahrawi Arab Democratic Republic - is a member of the African Union whereas Morocco is the only African country that is not.

Other quirks on the continent of Africa include Tanzania which operates two Trade Marks Offices. One is on the mainland or the former Tanganyika and the other is on the island of Zanzibar. When Tanganyika and Zanzibar merged to form Tanzania they maintained their separate trade mark systems.

Sierra Leone is now unique on the continent in using the former British classification system. In isolated St Helena - an island where the British exiled Napoleon - it is still a prerequisite to have a UK registration before local registration can be sought. In the absence of any amendments to the regulations this is seen to be a United Kingdom National Registration or, in other words, you cannot use a Community or International Registration designating the UK.

The French, Portuguese and Spanish territories located in Africa (e.g. Réunion in the Indian Ocean, Madeira and the Canary Islands in the Atlantic Ocean) are covered by Community Trade Marks (and national registrations in France, Portugal or Spain). An International Registration designating the European Union or France, Portugal and Spain would provide the same protection, although see my previous blog on why designating the EU in an International can be undesirable.

So the grand total for complete trade mark protection in Africa requires 32 or 33 applications (and a couple of Cautionary Notice publications). This may sound a lot, but it is a similar amount as required in North America of which it has nearly double the population. Madrid and OAPI filing routes also represent good value for this continent. You can lower this amount if you are willing to take calculated risks and designate additional countries such as Sudan in a Madrid Protocol application.

1. Madrid Protocol application designating Algeria, Botswana, Egypt, Kenya, Madagascar, Morocco, Mozambique and São Tomé and Príncipe
2. Community Trade Mark application to cover French, Portuguese and Spanish territories around Africa (can be included in Madrid application if need be)
3. OAPI application covering 16 countries of west Africa
4. 30 national applications in: Angola, Burundi, Cape Verde, Democratic Republic of the Congo, Djibouti, Ethiopia, Gambia, Ghana, Lesotho, Liberia, Libya, Malawi, Mauritius, Namibia, Nigeria, Rwanda, St Helena, Seychelles, Sierra Leone, South Africa, South Sudan*, Sudan, Swaziland, Tanzania (Tanganyika), Tunisia, Uganda, United Kingdom (as basis for application in St Helena), Zambia, Zanzibar and Zimbabwe
5. Cautionary Notice publications in Comoros, Eritrea (when allowed by the Goverment) and Somaliland. (Ethiopia indicated as a national application.) 
* when it becomes possible to lodge applications
(Lists exclude Somalia and Western Sahara.)