RULE OF LAW - JSE MAGAZINE

RULE OF LAW

Adams & Adams helps protect intellectual property rights in Africa

While the future of Africa looks bright, much still needs to be done. Most African economies have recorded solid improvements across all economic, political and social indicators. Developing local law, protecting the environment, respecting human rights and supporting local entrepreneurs are central to the continent’s continued business growth.

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Crucial to economic development and investment is the need for African countries to make significant legislative improvements, putting themselves in line with developing and developed nations. Failure to develop local legislation has a profound effect on the prospects of sustaining investment.

There have been significant improvements in most African territories on the intellectual property (IP) law front. Barring Eritrea, which still has not promulgated these laws, and Somalia, which is effectively ungovernable, it is possible to protect and enforce these rights across the continent.

For South African firms, an unprecedented opportunity to expand exists, especially in the consumer goods market, which currently makes up some 60% of sub-Saharan Africa’s economy.

IP strategy is often an aspect of expansion that is overlooked by SA firms, possibly as a result of perceptions that sub-Saharan Africa has a ‘Wild West’ trading environment that is not supported by adequate laws and enforcement systems.

While it is often true that laws in certain countries are lagging behind modern legislative developments, almost every nation in sub-Saharan Africa has an applicable formal system allowing IP to be registered or protected to some degree.

There are a number of good business reasons why an expanding business should protect its brands and other forms of IP in sub-Saharan Africa, as follows.

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Territorial limitations
Trade mark rights, in particular, are generally territorial; thus identical or confusingly similar trade marks are often owned by various proprietors in different countries. The failure to protect a brand in an economically significant African country could mean that somebody else lawfully appropriates and registers the brand in that state.

Some countries have legislation to protect so-called ‘international well-known marks’ such as McDonald’s or Nike. The brand names of most SA firms will not fall into this exceptional category.

The first-to-file rule
In most countries, especially former French, Portuguese and German colonies, the rights are acquired by the person who files the first trademark application that leads to registration in that country. In some former British colonies, a person who can show the first use of a trade mark in the country may acquire the earlier right if those rights can be proven in court. The process of proving an earlier user right often involves litigation and can be costly and uncertain.

For an SA firm that is expanding into a new market where its goods are not yet available (whether or not user rights are recognised), filing a trade mark application is the first step to achieving brand protection.

The scourge of counterfeit goods
It is clearly counterproductive if a business has a good product and someone imitates the product or packaging, and introduces a cheaper, inferior and often dangerous version to the market on the back of that company’s hard-earned reputation.

Africa is a dumping ground for counterfeit goods and owning a trade mark registration in most countries is the first step to combating the scourge.

In many major African economies, including SA, Nigeria, Uganda, Kenya and Cameroon, owning a trade mark registration means that the owner can file a notification at Customs in those countries to stop and detain counterfeit goods at the border.

Adams & Adams has seen many successful operations in sub-Saharan Africa where firms that own trade mark registrations have reduced the inflow of counterfeit goods significantly.

Against this backdrop, the firm realised the importance of being present throughout Africa, and has made a significant effort to develop its continental expertise. Adams & Adams has assisted many governments and their IP registries throughout Africa to develop laws and procedures. We have also worked with many African lawyers.  In addition to handling IP cases on a regular basis in all African territories, we have established a presence in most key jurisdictions.

Adams & Adams uses a sophisticated electronic docketing and maintenance system, which helps us follow-up on matters regularly. In certain instances, given the significant delays in finalising cases, these might otherwise never progress.

Our modus operandi in Africa is to create a significant network on the continent through a range of different arrangements, catering to the needs and requirements that are specific to each country, including associate offices.

We host our annual Adams & Adams Africa Network Seminar Meeting at our head office in Pretoria, which is attended by our local partners from almost every country on the continent, as well as senior government officials. At the meeting, we provide updates on legislative and practical developments in the various territories, share information, discuss challenges faced and possible solutions, as well as provide training and assistance.

Our African IP practice manager works closely with our local partners to ensure that we remain in close contact with their offices and those of their registries.

We conduct due diligence exercises and audits to make sure that the quality required is being met, although we are often hamstrung by registry issues in certain territories.

In collaboration with the University of Pretoria and aided by World Bank funding, we were able to produce a compilation titled A Practical Guide to Intellectual Property in Africa, which is a comprehensive guide to IP laws and procedures in Africa.

Adams & Adams managed to expand its Africa footprint in recent years and has decided that during 2015, further associate offices will be established, thereby extending our network to cover, hitherto, difficult but important jurisdictions.

Despite trying conditions, there were year-on-year increases in the number of trade marks and patent filings in most African countries. Our experience has shown that these figures often run hand-in-hand with positive economic development.  Adams & Adams enjoyed stronger collaboration with associate offices and greater co-operation with regional IP organisations over the past year. The firm engaged closely with local registries and continues to assist legislative and procedural developments in a number of countries.

Our vision is to not only benefit from the growth on the continent, but to contribute to its development to benefit all African citizens.

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Pretoria: + 27 (0)12 432 6000
Johannesburg: +27 (0)11 895 1000
Cape Town: +27 (0)21 418 8560
Durban: +27 (0)31 536 3740
www.adamsadams.com