Until the last decade of the 20th century Africa’s economic growth was seen to be the slowest in the world and Africa was viewed as a chronically poor region. However, Africa has seen what has been described as a “remarkable growth” since the mid-1990s. Ricardo Hausmann’s economic research team at Harvard predicts that of the 11 fastest-growing economies of the decade to 2020, 10 will emerge from Africa. In 2012, private equity firms invested US$1.13 billion into Sub-Saharan Africa.
With increased interest and foreign investment in Africa, investors are becoming concerned about the protection and commercialisation of their intellectual property in Africa. With 52 African countries, foreign trade mark owners require a cost effective and efficient mechanism to commercialise and manage their intellectual property in Africa.
The Madrid System, administered by the World Intellectual Property Organisation (WIPO), creates a mechanism for trade mark proprietors to obtain international protection of their trade marks, in a way which is administratively easy to manage and cost-effective. At present there are 37 African states that have joined the Madrid System. These are, in alphabetical order:
Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI (the African Intellectual Property Organization which includes the following member states: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoros Islands, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo), Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.
How effective is the Madrid System in Africa?
Of the 37 countries mentioned above, only seven have properly “domesticated” the Madrid Protocol through appropriate amendments to their national trade mark legislation, together with the implementation of enabling regulations, namely Botswana, Gambia, Ghana, Kenya, Morocco, Mozambique and Tunisia. Even in these seven countries, practical issues exist with the processing of International Registrations.
One of the core issues with the national applicability of IP treaties such as the Madrid Protocol is that additional direction, procedures and mechanisms need to be put in place, on a national level, to ensure that the national IP office is equipped to deal with and process International Registrations and also how to deal with objections, oppositions and so forth.
Even national trade mark legislation is not considered to be enacted properly until the so-called enabling regulations have been promulgated. Enabling regulations supplement and complete trade mark legislation by formally determining the processes and procedures through which the provisions of the legislation can be practically implemented and fulfilled by the national trade marks office concerned.
Apart from procedural issues, it is important that national laws clearly recognize that International Registrations shall have the same force and effect as national registrations. Without such express recognition, it will be up to the national courts to determine whether the rights arising from an International Registration should trump rights arising from national common law (in countries where common law rights arising from trade mark use are formally recognized) or prior trade mark registrations.
IP litigation is a growing in Africa, but in virtually all of the African Madrid member countries, national Courts have not yet decided on many IP matters and precedents are few and far between. More often than not, the presiding judge or adjudicator will not have the benefit of earlier judgments to rely upon when hearing and ruling on a dispute which may revolve around the national enforceability of an International Registration. The presiding official may not even be experienced in IP law to begin with. In a country where no formal domestication has occurred, the judge may find no reference to the Madrid system in the national IP laws whatsoever.
When involved in a trade mark dispute in a country where the Madrid Agreement or Protocol has not yet been domesticated, any trade mark owner would prefer to be able to rely upon nationally recognised statutory rights, rather than have to make constitutional arguments based on the applicability of international treaties through analysis of international law.
To illustrate how the lack of proper implementation of the Madrid Protocol can lead to difficulties arising on a national level, we have compiled information on some key African jurisdictions where the validity and enforceability of International Registrations remain in question. Read this analysis covering Zimbabwe, Ghana, Algeria, Liberia, Egypt, OAPI, Botswana and The Gambia on the MARQUES website.
By Mariëtte du Plessis and Stephen Hollis of Adams & Adams.
Mariëtte is a member of the MARQUES Trade Mark Law and Practice Team
Issue 071
