3 August 2014

Horn of Africa and Sudan region update

It's been a while since I last blogged, but I am pleased to be back with a piece on the Horn of Africa and the Sudan region.

This is an area of the world that has seen a few developments with respect to trademarks, yet conversely is an area of the world where protecting trademarks can be difficult-to-impossible.

The most populated country of the region - and the most populated landlocked country in the world - Ethiopia introduced a new trademark law in early 2013. This provided a June 2014 deadline in which to re-register rights in the country. This deadline has now been extended to 23 December 2014. The requirements for re-registrations are fairly bureaucratic (e.g. a Power of Attorney must be legalised up to the Ethiopian Consulate) so it's recommended to act now if any rights need re-registering.

Across Ethiopia's western border is Africa's newest nation of South Sudan. This country has decided to use the law of (north) Sudan to which it was a part prior to independence. However, they have adopted some practicalities and don't follow the law to the lettter. For example, the law requires trademark applications to be supported by legalised documents but South Sudan does not have diplomatic missions in many countries so notarisation of documents is proving to be acceptable. That said, South Sudan does have consulates in the United Kingdom and United States, amongst a few others.

The trademark system appears to be more of a deposit system and trademarks are not being published for opposition purposes (as they should be according to the law). It does appear that cancellation can be requested at the court though.

It is hoped that when South Sudan does adopt a law of its own that it will recognise any of the rights it is registering in the meantime.

Elsewhere, in the region, it's not possible to register trademarks in Somalia despite this country having a trademark law. This has been the case for some time now and it is expected that the Trademarks Registry building was destroyed in the fighting of the early 1990s.

In the northern region of Somaliland, which has declared its independence from Somalia, it is possible to publish Cautionary Notices. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trademark legislation but in the absence of a Trademarks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

Eritrea is another Cautionary Notice jurisdiction in the region. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. Cautionary Notices are the protection route for brand owners without a local presence. However, the publication of Cautionary Notices in Eritrea is not always possible as the authoritarian government restricts the publication of Cautionary Notices from time-to-time.

A country where it is possible to protect trademarks is Djibouti. With an estimated population of 800,000, it's not high up in commercial importance to many brand owners and trademark filings are not high in volume. However, the Port of Djibouti is very important to Ethiopia's imports and exports and its position as a transit country should not be overlooked.

It is quite expensive to protect trademarks in the country compared to its size. Nevertheless, trademark applications mature to registration fairly quickly. An unusual colonial legacy sees that if you support an application with a certified copy of a French registration then it can smooth the way to registration, although this is not a prerequisite.

Sudan also has a trademark law and is the only country in the region to be a part of the Madrid System. That said, there are some question marks on how enforceable these are. I understand they do not follow the same process as national filings and there are rumours that Madrid designations are piled up in a corner of the Sudanese Office.

Sudan is also a member of ARIPO. However, it has not yet joined the Banjul Protocol that governs ARIPO trademark filings.

As for national applications, once you have satisfied the bureaucratic filing requirements, trademark applications are prosecuted slowly. An eight-month opposition period hardly assists with the fast-tracking of applications.

If the Horn of Africa and the Sudan region is an area of the world where you need to protect your trademarks then it is advisable to begin your efforts as soon as possible.

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