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AFRICA: RECENT IP DEVELOPMENTS
INTRODUCTION
We have seen a number of important developments in African IP of late. Here are a few examples.
ARIPO – growth in trade mark membership
The African Regional Intellectual Property Organisation (ARIPO) is the designation system that covers
much of English-speaking Africa. ARIPO was initially limited to patents, but in time it was extended to
cover trade marks through an agreement called the Banjul Protocol. The following countries belong to the
Banjul Protocol:
Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Uganda,
United Republic of Tanzania (Tanganyika and Zanzibar) and Zimbabwe.
It has recently been announced that three further countries will be joining the Banjul Protocol, namely:
Gambia, Mozambique and Zambia.
Although the ARIPO system has proved to be popular for patents, it is seldom used for trade marks. One
of the reasons for this is that there are doubts about the validity and enforceability of ARIPO trade mark
registrations in certain member countries due to the fact that these countries have failed to specifically
incorporate the Banjul Protocol into national law. It is therefore unlikely that this latest development will
be very significant.
ETHIOPIA – judicial calm during political storm
Due to political unrest a state of emergency has been declared in Ethiopia. This is obviously not good news,
but it is heartening to know that the judicial system still seems to be working.
In a recent decision that will be of interest to all IP owners, Intercontinental Hotels Inc v DH Mex Plc, the
country’s highest court ruled that a foreign company that has a trade mark registration in the country has
locus standi (the legal capacity to sue or be sued) in connection with its registered trade mark, even if it
does not have a local establishment. Local companies had in the past argued that foreign trade mark owners
could not enforce or defend trade mark registrations because they had no business presence in Ethiopia.
LIBERIA – new IP legislation
Liberia recently consolidated its IP law in the Industrial Property Act 2014 (the Act), a piece of legislation
that came into force on 22 July 2016. The new law was well overdue because Liberian IP had been
somewhat disorganised – although there was an Industrial Property Act of 2003 this was never formally
passed by Parliament, yet its provisions were followed in terms of an executive decision. There was also
separate copyright legislation.
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The Act incorporates all Liberian IP into a single law -patents, utility models, layout-designs of integrated
circuits, industrial designs, trade marks, trade names, geographical indications and copyright. The Act also
deals with enforcement, which is very important given how much counterfeiting occurs in Africa. Here are
a few of the more important features of the Act:
Patents: The test for novelty is an absolute one and an applicant is obliged to provide the Liberian office
with foreign search reports and rejections notices. There is a 20-year registration term, with annual fees
(annuities) being payable. As is the norm in Africa there are extensive compulsory licensing provisions.
The possible link between patents and traditional knowledge is dealt with – the Act says that where the
invention ‘consists of or is directly derived from biological material or from traditional knowledge obtained
from a particular community, the description shall indicate the source and origin of that material or
knowledge.’
Utility models: The test for registrability is ‘new and industrially applicable’, and the term is 10 years.
There are provisions for conversion from patents to utility models, and vice versa.
Lay-out designs: There is specific provision for the registration of layout-designs of integrated circuits.
The term of protection is 10 years from the date of filing or first commercial exploitation, or 15 years from
the date of creation.
Industrial designs: The test for novelty is an absolute one and the registration term is 10 years, with the
option of a further 10-year extension.
Trade marks: The definition of ‘mark’ says that it must be ‘visually perceptible’ and that a representation
of a mark may not consist of a written description – this does seem to exclude sounds and smells from trade
mark registration. The shape of goods or packaging is, however, definitely registrable. The registration
term is 10 years and the non-use term is three years.
Geographical indications: Groups of producers or competent authorities can apply for the registration of a
Geographical Indication. The owner of a Geographical Indication can sue for an injunction in the case of
any unauthorised use of the name which falsely suggests a geographical origin and misleads the public - in
the case of wines and spirits the owner can sue for any use of the name, even if it is in conjunction with
words like ‘kind’, ‘style’ or ‘type’ and the true origin of the goods is actually indicated.
Copyright: The Act grants protection to a wide range of works including literary works, artistic works,
musical works, dramatic works, sound recordings and computer programmes. Although there is provision
for the registration of copyright, unfortunately, it is unclear what the effect of registration is, in other words
whether it is a prerequisite for either the subsistence or enforcement of copyright.
Enforcement: There are specific provisions that relate to the infringement of the various IP rights. These
sections of the Act provide for injunctions, damages and the destruction of goods, as well as provisional
measures that are designed to preserve evidence. The Act also has border measures that are aimed at
preventing the importation of goods bearing counterfeit marks or pirated copyright goods.
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SOUTH AFRICA – IP framework
The South African authorities recently approved a document known as the Intellectual Property
Consultative Framework (the Framework), a document that seemingly replaces the controversial draft
Intellectual Property Policy published in 2013. The Framework is intended to establish a new IP regime
for South Africa. These are some of the more noteworthy features of the Framework:
It recognises that the South African Constitution protects the right to property, and this includes IP.
It says that there must be a balance between the rights of the creators and users of IP.
It strongly suggests that the IP regime should complement the country’s ambition of developing a
local pharmaceutical manufacturing industry.
There is a strong inference that the proposed substantive examination system for patents will be
phased in, and that pharmaceutical patents will be first in line.
ZAMBIA – new designs legislation
There is new registered design legislation in Zambia. The Industrial Design Act 2016 came into effect on
6 June 2016, and it repealed the old law, the Registered Design Law 1958. Here are some notable features:
Registrability: Whereas under the old law local novelty was sufficient, absolute novelty is now the standard.
There are exceptions, for example, prior disclosure will be excused if it occurred within six months of the
application.
Exclusions: Amongst the designs that are excluded from protection are those that are contrary to ‘well
established natural laws’ and ‘principles of humanity and environmental conservation’.
Proprietorship: The creator is defined as the person who actually creates the design, and this includes the
person who made the arrangements for the creation of a computer-aided design. There are, however,
exceptions regarding, inter alia, commissioned designs, designs created by employees, and joint
proprietorship. The creator of the design is the original proprietor.
Employees: In cases where the design was created in the course of an employment contract the rights belong
to the employer. However, in cases where the design ‘acquires an economic value much greater than the
parties could reasonably have foreseen at the time of concluding the contract’, the employee is entitled to
equitable remuneration as agreed or determined by the court. A design created ‘without any relation to an
employment or service contract, and without use of the employer’s resources’ on the other hand belongs to
the employee.
Opposition: A design application can be opposed on various grounds including lack of novelty.
Duration: The duration of a registration is five years from the filing date, and this can be renewed for a
further period of five years (10 years in total). Previously, a registration could be extended for two further
periods of five years, so 15 years’ protection in total.
Limitation of rights: The rights granted to the owner are limited to ‘industrial or commercial activities’
and do not relate to acts done for scientific research, experimental use, use for teaching, and certain
government use.
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Enforcement: The remedies that are available to the owner include an injunction, delivery-up, damages, an
account of profits, royalties, and the destruction of infringing articles. Damages are not available in cases
of innocent infringement.
Groundless threats: A person threatened with infringement proceedings can get an injunction if the threat
is groundless. The mere notification of a right does not amount to a threat.
Dealing with a registered design: A registered design is personal property that can be transferred by
assignment, mortgage, pledge, testament or operation of law. A transfer must be in writing, signed by the
proprietor, and registered.
Licences: Licences must be recorded. The Registrar can refuse to register a licence that imposes unjustified
restrictions on the licensee or that is prejudicial to the economic interests of the country.
An exclusive licensee has the right to sue for infringement.
Compulsory licences: There is provision for compulsory licences – these can be sought after three years,
inter alia, in the interests of public health or safety, and for failure to meet the demands of the domestic
market.
ZIMBABWE – import ban and Madrid Protocol delay
Import ban
The Zimbabwean economy is in a poor state. In an attempt to bolster the economy, the government passed
a law in 2016 that restricts the importation into Zimbabwe of a whole range of products – the ban covers
goods as diverse as coffee creamers, camphor creams, petroleum jellies, body creams, baked beans, potato
crisps and cereals. This measure clearly has both business and legal implications (such as non-use) for many
trade mark owners. There are questions about the legality of this law in the light of international agreements
such as TRIPS, but for the moment the ban stands.
Madrid Protocol
Zimbabwe joined the Madrid Protocol in 2015. On 1 July 2016 the authorities passed a piece of legislation
called the General Laws Amendment Act 3 of 2016, which introduced a Section 97B to the Trade Marks
Act. The Madrid Protocol has, however, still not become effective in Zimbabwe, because the statutory
instrument that is required by Section 97B to align the provisions of the Madrid Protocol with the Trade
Marks Act has not yet come into effect. What this means is that international registrations that designate
Zimbabwe have no legal effect at present.
It is, however, anticipated that international registrations designating Zimbabwe will be given retrospective
effect, although owners of international registrations will probably not be able to sue for infringements that
occurred prior to the date on which the Madrid Protocol eventually comes into effect.
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CONCLUSION
Africa has its problems and there is a certain amount of political instability. But many African governments
do seem to be making a concerted effort to ensure that their IP regimes comply with international standards.
They clearly realise that this leads to greater investment.
Matthew Costard & Mark Kemp
Spoor & Fisher Jersey
January 2017