[AfrICANN-discuss] Africa warms to trademarks

[Anne-Rachel Inné]

BRANDING
Africa warms to trademarks
Darren Olivier
24 April 2008

The protection of brands is becoming increasingly important in Africa,
particularly in light of the upcoming World Cup and some recent court
decisions. Darren Olivier, director of Bowman Gilfillan Inc, explains.

Brand investment into Africa is modest by world standards as companies
in the West have tended to focus on emerging economies in Asia and the
Middle East.

The number of trademarks filed annually by African-based companies is
not large either. For example, the total number of filings at the
Office for Harmonization in the Internal Market (OHIM) using African
addresses between 1996 and 2007 was 2,288 - or just over 1% of filings
originating from outside the European Union.

However, there are recent signs of a 'trademark warming' in Africa:

• African governments are becoming increasingly outspoken on the need
to protect intellectual property;

• Counterfeiting is rising significantly, showing both a market for
brands and a need for proper brand protection;

• Africa's largest inward investment deal was signed last year;

• The continent's European filings at OHIM were at their highest in
2007 relative to previous years; and

• The continent will host FIFA's World Cup Football event, a
traditional showcase for multinational brands, in 2010.


Bearing in mind that the African continent is the second most populous
in the world, and hence a significant potential market, Africa's call
for attention on the trademark manager's budget spreadsheet should be
getting louder.

This column focuses on recent developments on the continent affecting
trademark management decisions.

Domain names

South Africa has launched its own alternative dispute resolution
procedures and rules in relation to its country-code top level domain
(ccTLD), while the Nigerian Internet Registration Association has
agreed to regulate '.ng', Nigeria's ccTLD.

Both of these developments should:

• enhance the need for registered trademark protection to assist in
defending against cybersquatters; and

• provide comprehensive protection to one's trademark against cybersquatters.

Recent court decisions

In British American Tobacco Kenya Ltd v Cut Tobacco Kenya Ltd, Kenya's
Court of Appeal held that there can be no proprietary rights in a
particular colour.

The Cape High Court of South Africa held in favour of Crocs Inc and
others defending an appeal brought by Shoprite Checkers against a
counterfeit goods seizure by them in South Africa.

The Board of Appeal of the African Regional Industrial Property
Organization (ARIPO) issued its first appeal decision last August. The
case involved competing applications for the marks FONES 4 U by two
different proprietors filed on separate dates. The board stressed that
ARIPO should "strictly observe the [Banjul Protocol on Marks] with
respect to time limits information delivery, procedure and processing
of applications, procedure on appeals and rules of natural justice".

Counterfeits

The World Customs Organization now regards African countries as the
main concern in Europe's fight against counterfeit goods, which are
said to be worth over $200 billion in trade every year.

South Africa, Tanzania, Zambia and Zimbabwe have all conducted recent
high-profile raids to prevent counterfeits from entering their market.
This should encourage brand owners to file defensive applications in
counterfeit hotspots or otherwise consider whether there is a dormant
market they should tap into.

Government action and investment

The Japanese Patent Office has agreed to establish a significant fund
aimed at assisting Africa in developing human resources in the
intellectual property (IP) field.

Other encouraging developments include the following:

• Ministers in a number of countries, notably Botswana and Zambia,
have spoken out on the need for effective IP protection;

• Regulators have cleared the Industrial Commercial Bank of China's
(ICBC) bid to purchase 20% of Africa's largest banking group (Standard
Bank) for R36.7 billion ($4.9 billion); and

• Angola is tipped to have the fastest growing economy in the world by
The Economist. While Africa cannot yet claim to be at the forefront of
IP protection in comparison with the United States or Europe, properly
spent funds should assist in persuading brand owners to invest in
Africa. The ICBC deal is seen as a strong vote of confidence in Africa
and the Football World Cup will shine a spotlight on Africa (and on
companies' brand protection).

Other considerations

As over 70% of all EU filings from Africa come from South Africa, EU
and even US law firms looking to strike reciprocity deals may be
minded to use a single firm for all of their African trademark
requirements.

For a number of reasons (including low legal costs and similarities in
legal systems), South Africa may also be considered as a
cost-effective destination for outsourcing the management work of all
or part of a brand owner's trademark portfolio.

As Africa is home to numerous languages, advice may be required on
filing for translations and even transliterations to protect properly
one's brand. For example, Google recently opened an office in South
Africa which offers its search services in Afrikaans, Sesotho, Zulu
and Xhosa. As overall filings from Africa appear to be increasing too,
brand owners outside of Africa may want to extend their watching
services to cover some African-based competitors.

The filing and enforcement of trademarks in Africa can be somewhat
daunting. This is often because of different cultures, poor
communications systems, a sometimes overly easygoing attitude and
occasionally pure ignorance. However, things seem to be changing and
one need only ask McDonald's Inc of the problems and huge cost it had
to incur in trying to get its trademark back from an infringer in
South Africa in the mid-1990s: Africa is a risk not worth ignoring.
WTR

*Darren Olivier is a director of Bowman Gilfillan Inc and co-author
and founder of the Afro-IP blog (http://afroip.blogspot.com/)