Protecting marks across the continent remains complex and filing directly with national offices may offer the most reliable protection, say Alicia van der Walt and Tshireletso Tlholoe of Adams & Adams
Africa, home to 54 sovereign states, is emerging as one of the fastest-growing regions globally. The continent’s economic trajectory is set to continue its upward climb, with projections indicating that the GDP will exceed US $4.2 trillion by 2027.
A key milestone in Africa’s economic landscape is the African Continental Free Trade Area (AfCFTA). With 54 out of 55 African Union member countries on board (excluding Eritrea), the AfCFTA is positioned to create a transformative single market for goods and services across the continent. This landmark agreement aims to enhance intra-African trade, streamline customs procedures, and foster economic cooperation among member states, paving the way for unprecedented economic integration.
Despite this promising integration, it is essential to remember that Africa is not a single country, but a vast continent comprising 54 sovereign states, and that intellectual property is territorial in nature. While regional and international systems aim to simplify registration, protecting trademarks across the continent remains complex due to the varied national laws.
Regional and international trademark filing systems in Africa
Africa offers two primary regional systems for trademark protection, namely the African Intellectual Property Organization (OAPI) and the African Regional Intellectual Property Organization (ARIPO). These systems intend to provide a streamlined approach to trademark registration across multiple African countries, offering a single application process to cover African member states. Additionally, the Madrid Protocol, an international system managed by the World Intellectual Property Organization (WIPO), also allows for protection in African member countries.
OAPI
OAPI is a union of 17 predominantly French-speaking countries. The member states of this union have renounced their domestic laws and thus national filings are not possible in the member states. Accordingly, a single application—once it matures to grant—will cover all of the member states, namely, Benin, Burkina Faso, Cameroun, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Comoros, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo.
The resultant regional registration is the only way to obtain statutory trademark protection in these countries. It operates smoothly and is a very effective system.
ARIPO
ARIPO, in contrast, operates under a different framework. A registration through ARIPO does not equate to a regional registration but rather produces individual national registrations in the designated member states.
The ARIPO system is governed by the Banjul Protocol and there are currently 22 states which are members of ARIPO, being Botswana, Cape Verde, Eswatini (Swaziland), The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Seychelles, Sierra Leone, Somalia, Sudan, Uganda, Tanzania, Zambia, and Zimbabwe.
Only 13 of the 22 ARIPO member states have acceded to the Protocol being, Botswana, Cape Verde, Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé and Príncipe, Eswatini (Swaziland), Tanzania, Uganda and Zimbabwe. Of these countries, only Botswana, Malawi, Mozambique, Namibia and Zimbabwe have amended their national legislation in order to recognise ARIPO registrations.
ARIPO is, therefore, only effective in these jurisdictions. In other member countries where the Banjul Protocol has not yet been domesticated into national trademark law, the system faces significant challenges, including inconsistent enforcement and the lack of integration with national registers.
As a result, it is usually recommended that proprietors should continue to protect their trademarks on a per country basis until such time that the national laws of member states for which protection is required, have been amended to give recognition to the Protocol. Conversely, ARIPO is highly effective for patents and design registrations.
Madrid
The Madrid Protocol, managed by WIPO, offers a pathway for broader international trademark protection, including in Africa. At present, there are 24 African jurisdiction members to the Madrid Protocol, namely, Algeria, Botswana, Cape Verde, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Namibia, OAPI, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia, and Zimbabwe.
The value of the Madrid Protocol in Africa varies significantly as the system only functions effectively in member countries with modernised IP laws, fully digitised systems, and registry examination practices that are aligned with international best practice. Only a handful of countries, ie, Algeria, Egypt, Kenya, Morocco, OAPI and Tunisia, routinely meet WIPO’s strict timelines for examining and publishing marks.
One of the biggest problems African registries face, with respect to the processing of international registrations (IRs), is the strict examination timeline (12–18 months). If the examination period expires and WIPO has not received any objections to the IR from the national office, then according to WIPO, the IR is deemed registered in that specific designation.
Consequently, there is an increasing number of cases where the owners of IRs were under the mistaken impression that they had secured enforceable statutory rights in some African Madrid member countries, to only learn at a later stage, usually when enforcement becomes a priority, that enforceable rights might not have been properly secured on a national level in those African member countries.
Additionally, although WIPO does not recognise refusals or oppositions submitted late, some national offices still refuse marks or allow oppositions, after WIPO’s examination or opposition timelines, due to internal backlogs or technical difficulties. This discrepancy can lead to a situation where WIPO’s database shows a mark as ‘registered’, while the national register indicates it as ‘refused’ or ‘under opposition’.
Consequently, a third party may subsequently have registered the same or similar mark nationally, and when the owner of the international mark seeks to enforce their rights (eg, against a local distributor who acted in bad faith) they discover that they have no statutory rights to rely on and enforce under national law.
National applications remain the gold standard
Although regional and international systems offer a convenient and cost-effective solution for registering trademarks worldwide, the reality on the ground in Africa suggests that national trademark applications, except for OAPI, often provide the most reliable protection.
Filing directly with national trademark offices ensures that a trademark is recognised and protected under the specific legal framework of each country, minimising the risk of conflicts and ensuring enforceability.
