Adams & Adams is pushing the boundaries in terms of legal evolution in Africa.  In this article, Simon Brown, partner, provides an overview on the state of play in the development of Intellectual Property (IP) law on the continent.  Simon also details the firm’s upcoming annual Africa Network Meeting which sees a collection of legal practitioners and government officials gather in South Africa to address Intellectual Property issues pertaining to the continent.

Whilst the future of Africa looks bright, there is still much from a legal perspective which must be done.  Most African economies have recorded solid improvements across economic, political and social indicators.  However, developing local law, protecting the environment, respecting human rights and supporting local entrepreneurs remain central to the continent’s business growth. 

Crucial to economic development and investment, is the need for African countries to make significant improvements on the legislative front, putting themselves in line with developing and developed nations.  Failure to develop local legislation will have a profound effect on the prospects of sustaining investment. 

On the Intellectual Property Law front, there have been significant improvements in most African territories. Barring Eritrea, which still has not promulgated Intellectual Property laws, and Somalia, which is effectively ungovernable, it is possible to protect and enforce intellectual property rights across the continent.

For South African companies, an unprecedented opportunity to expand exists, especially in the consumer goods market which currently comprises 60% of sub-Saharan Africa’s economy.

IP strategy is often an aspect of expansion that is overlooked by South African businesses, possibly a result of perceptions that sub-Saharan Africa has a “wild west” trading environment that is not supported by adequate legislative and enforcement systems. Whilst it is often true that laws in certain African countries are lagging behind modern legislative developments, it is a fact that almost every country in sub-Saharan Africa has an applicable formal system in terms of which IP can be registered or protected to some degree. Whether this is implementable is a point for debate.

There are a number of good business reasons why an expanding business should protect its brands and other forms of IP in Sub-Saharan Africa, these include:

Territorial limitations

Trade mark rights, in particular, are generally territorial. Therefore identical or confusingly similar trade marks are often owned by different proprietors in different countries.

The failure to protect a brand in an economically significant African country could mean that somebody else lawfully appropriates and registers the brand in that country.

Some countries have legislation to protect so-called “international well-known marks” of the calibre of marks such as McDonald’s or NIKE. The brand names of most South African businesses will not fall into that exceptional category. 

The first to file rule

In most countries, especially former French, Portuguese and German colonies, the rights are acquired by the person who files the first trade mark application that proceeds to registration in that country.

In some former British colonies, a person who can show the first use of a trade mark in the country may acquire the earlier right if those, earlier rights can be proven to the satisfaction of a Court. The process of proving an earlier user right often involves litigation and can be costly and uncertain.

For a South African business that is expanding into a new market where its goods are not yet available, whether or not user rights are recognised, filing a trade mark application is the first step to achieving brand protection.

The plague of counterfeit goods

It is clearly counter productive if a business has a good product and somebody else has imitated the product or packaging / get up and  introduces a cheaper, inferior and often dangerous product into the market on the back of the business’ hard earned reputation.

Africa is a dumping ground for counterfeit goods and owning a trade mark registration in most countries is the first step to combating the scourge.

In many of the major African economies, including South Africa, Nigeria, Uganda, Kenya and Cameroon, owning a trade mark registration means that the owner can file a notification at Customs in those countries to stop and detain counterfeit goods at the border. We have seen many successful operations in sub-Saharan Africa where businesses which own trade mark registrations have reduced the inflow of counterfeit goods significantly.

Against this backdrop, Adams & Adams realised the importance of being present throughout the continent and has spent significant effort in developing our expertise.  The Firm has assisted many Governments and their IP Registries throughout Africa in developing laws and procedures.  At the same time we have worked with many African lawyers. 

In addition to handling IP cases on a regular basis, in all African territories, we have established a presence in most of the key African jurisdictions.  We make use of a sophisticated electronic docketing and maintenance system to enable us to follow-up matters on a regular basis, which in some instances, given the significant delays in finalising cases, might otherwise never progress.

Our modus operandi in Africa is to create a significant African network from a multitude of different arrangements, catering for different options, dependent upon the needs and requirements that are specific to each country, including Associate Offices. 

Underpinning this strategy is our annual Adams & Adams Africa Network Meeting which takes place this year on 17 September at our Head Office in Pretoria.  Attended by our local partners from almost every country on the continent, as well as senior government officials, the meeting is an opportunity to provide updates on legislative and practical developments in the various territories, share information, discuss challenges and possible solutions, as well as provide training and assistance.
One of our keynote speakers this year includes Mr Fernando dos Santos, the Director-General of the African Regional Intellectual Property Organisation (ARIPO).  Recently voted by Managing Intellectual Property as one of the world’s 50 most influential people in Intellectual Property, Mr dos Santos’  address will provide insights into how he is spearheading ARIPO’s goals and achievements in Africa and worldwide.
Adams & Adams has managed to expand its Africa footprint in recent years and we will be extending our network to cover difficult but important jurisdictions.  Adams & Adams enjoyed stronger collaboration with associate offices and greater co-operation with regional IP organisations over the past year.  The firm engaged closely with local Registries and continued to assist legislative and procedural developments in a number of countries. 

Our vision is not only to be able to benefit ourselves from the growth that has occurred on the continent, but to contribute to its development for the benefit of all African citizens.

Issued by Adams & Adams