Trade marks are only protected in countries that they are registered in. Where you intend to use a trade mark in more than one country, the question becomes whether you need to file national trade mark applications in each territory or use the trade mark systems available to file a single trade mark application covering more than one territory.
One such system is the ARIPO (African Regional Intellectual Property Organization) system. Enforceability is always a concern when filing through any system where multiple territories are covered through one trade mark application. An ARIPO trade mark application can only designate the 10 countries signatory to the Banjul Protocol, where it will be enforceable.
At this time there are 19 Member States of ARIPO (Somalia is currently inactive). Of the 18 active Member States, only 10 are signatory to the Banjul Protocol relating to trademarks, and may be designated under an ARIPO trade mark application.
They are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, São Tomé and Príncipe, Tanzania (“Tanzania mainland” or “Tanganyika”, not Zanzibar), Uganda, and Zimbabwe.
Of these signatories of the Banjul Protocol, only Botswana, Liberia, Zimbabwe, Malawi and (most recently) Namibia have incorporated the provisions of the Banjul Protocol into their national legislation.
In the High Court of Uganda, the judge inferred that ARIPO trade mark registrations designating Uganda would be enforceable and in addition, Sao Tome and Principe has a provision in their constitution that if they become a party to a treaty it automatically becomes binding.
This means that an applicant can use the ARIPO system to file a single application covering the aforementioned ten countries instead of filing single national trade mark applications in these ten territories.
Written by Refiloe Nene, KISCH IP