In 2016, seven of the ten fastest growing economies in the world will be in Africa. This is in spite of the challenges faced in Africa, including droughts affecting agriculture, soft commodity prices, political unrest and currency fluctuations in emerging markets. As a result, Africa is the second most attractive investment destination in the world, just behind Asia. (Dampened Growth, Resilient Optimism, The Economist 2016 African Business Outlook Survey)
But if one invests in Africa will one be able to sufficiently protect their intellectual property (IP)?
IP in Africa from a Historical Perspective
To understand the IP landscape in Africa, it is best to look back to the historical origins of laws protecting intellectual property. In 1913, most countries in Africa had a colonial power. The laws in these countries generally followed the laws of that colonial power. Thus if the country was under the influence of England, it would operate under the common law and recognize trademark rights based on principles of first to use. If it was under the influence of France or Portugal, it would operate under a civil law system and recognize trademark rights based on first to file. When the colonial power eventually left, the African country would generally retain the IP laws set up by the old regime. See map below.
Independence resulted in many required legal changes and amending IP laws was not at the top of the list. Many years passed before these countries recognized the need and importance of amending their IP laws to become more modern and in line with international changes. Many countries are now passing new IP laws to conform to TRIPS.
While some countries started implementing changes to their IP legislation in the second half of the 20th century, most countries only started amending their IP legislation in the late 1990's. In the past 10 years amendments to IP laws in African countries have been happening at a rapid pace. New IP laws have recently been enacted in Mozambique, Seychelles, Morocco, Angola and Uganda. New IP laws are in the pipeline in Ghana, Kenya, Malawi, Namibia, Nigeria, Zambia and South Africa.
Welcomed changes to IP laws include:
1. recognition of well-known marks (i.e. giving protection to a mark that has never been used or registered if it can be proved to be well-known in the relevant market sector in the country where enforcement is desired);
2. anti-dilution provisions;
3. anti-counterfeiting legislation to provide for the recordal of trademark registrations with customs to stop the importation of counterfeit goods;
4. trademark infringement based on similar goods instead of identical goods;
From a practical point of view, one of the most welcomed changes is the number of countries that have either converted their manual records to an electronic database or are in the process of doing so, at least for new applications being filed, including Nigeria. Some electronic systems are open to the general public via the internet for searching and checking details of marks. The most recent system available is in South Africa: http://esearch.cipc.co.za/, although there are some limitations to details provided in this system.
Regional IP systems in Africa and the Madrid Protocol and Agreement
Many countries in Africa have recognized the advantage of forming regional systems to allow a single application to give rise to protection in multiple countries. The two regional systems in Africa are OAPI and ARIPO. These systems operate differently and have different member countries. The maps below reflect the countries that have joined these regional systems for trademarks and patents.
OAPI is based on the French civil law system and its office is in Cameroon. It has 17 member countries, mainly former French colonies. All 17 countries renounced their own IP laws and the only way to obtain patent or trademark protection is to file an OAPI application. Registered rights will apply to all member countries. There is no option to limit the countries for protection. The system works extremely well for both patents and trademarks.
ARIPO is based on the English common law system and most of its members were former British colonies. It has two separate protocols – the Harare Protocol for Patents and the Banjul Protocol for Trademarks. 19 countries have joined for Patents and 10 countries have joined for Trademarks. These countries still retain national patent and trademark laws; therefore one can still file national applications. When filing an ARIPO application one must designate the countries where IP protection is desired. The costs will vary depending on the number of countries designated. The ARIPO registry is based in Zimbabwe.
Many countries have also joined international treaties, most notably Madrid for trademarks and the Patent Cooperation Treaty (PCT) for patents.
Are these IP changes, regional systems and Madrid effective for protecting IP?
All of the above is very encouraging. However just like the attractiveness of Africa from an investment point of view in spite of the obstacles explained above, the attractiveness of the changes in IP protection must also be considered in the face of some challenges.
One main challenge is that when a country joins a regional system or an international treaty, if the country is based on the common law, it must also pass national laws to give force to the international treaty. For civil law countries, treaties are self-executing. In many countries that have joined regional systems or signed international treaties, there are problems in that the country may not have done the necessary to meet the treaty's obligations, including passing the appropriate national legislation and conforming to its own constitutional principles.
The OAPI system works well for both patents and trademarks. However there are concerns that OAPI's succession to the Madrid Protocol in 2015 was not proper and thus one would be better to file an application directly with OAPI and not through a Madrid designation.
With regard to the ARIPO system, it works extremely well for patents but not so well for trademarks. Most of the countries that have joined the treaty are based on English common law. Of the countries that have joined ARIPO for trademarks, only Botswana and Zimbabwe have passed the requisite national law.
Similarly, while 21 African countries, plus OAPI as a regional system, have joined Madrid, not all countries have done the necessary to meet the obligations of the treaty including passing national laws to give force to Madrid. If such law has not been passed or implemented, there is a risk that an application extended to such country via a Madrid application will not be examined or published for opposition by the designated country. Consequently the mark may not be recorded in that country's trademark register. When it comes time to enforce, an alleged infringer may have a good defense by counter attacking the validity of the registration based on the application not properly being examined or based on a constitutional challenge that the country did not meet its obligations after signing the treaty. The effectiveness of International Registrations may only be assured in the following countries: Algeria, Botswana, Egypt, Ghana, Kenya, Madagascar, Morocco, Mozambique, Rwanda, Sao Tome and Principe, Sudan and Tunisia.
Bottom line: is it worth protecting IP in Africa?
Before investing in a country, generally one wants an indication of the likelihood that it will have a positive return on investment. Similarly when one "invests" in IP protection, one wants an indication that it will have an enforceable right and can stop infringers. In Africa, is enforcement possible?
Enforcement is certainly possible in Africa although the amount of IP litigation in Africa is far less than in some countries in the world. But can blame be cast on the legal systems or are there other reasons?
When one looks at the legal systems, generally all the necessary requirements for enforcement are in place. Registered rights are available. Courts are in place. Judges and advocates are also in place. Do some countries have "better" conditions than others? Yes. Some countries have more training and experience in IP for both advocates and judges. Thus the quality of the process may be better in some countries, just like the quality of the process can differ throughout the world depending on which court you may find yourself. At this point the majority of IP litigation is in South Africa.
However I believe that one of the main factors why there is not more IP litigation in Africa is due to the value of the claim of infringement. Investing in litigation is time consuming and expensive. If the value on the return of investment of the IP is not worth the cost of litigation, the IP owner will not follow through with bringing suit. Good lawyers will always first try and find a reasonable solution to the problem before litigating. While there are many IP disputes in Africa, most are resolved prior to going to a full trial, hence the lack of many reported judgements. As investment in Africa grows, the return on investment and the value of IP will also increase. When the value of IP is high enough the proprietor will choose to invest in "full blown" litigation to protect the value of his asset.
During the time when one's IP is increasing in value, one must be protected by having the necessary registrations in place. It is too late to wait to register until one is harmed by an infringement and then realizes the value of the IP at stake.
In conclusion, yes I believe that protecting IP in Africa is possible. Registering one's IP in Africa is the preferable method to preserve and protect one's future profits.