Thinking of expanding? Do not forget to protect your brand.

This month we will take a break from the Consumer Protection Act as we look at trade mark protection in our neighbouring states and the rest of the African continent.

A logical extension for a franchise business is to branch into neighbouring countries or even venture further north into Africa. Due to such free trade initiatives as The Southern African Development Community (SADC), a regional organization aiming to promote co-operation and integration amongst its member states, the economies of such states have become increasingly interdependent, with an attendant free flow of goods and services across borders. The SADC member states are Angola, Botswana, DRC, Lesotho, Malawi, Mauritius, Mozambique, Namibia, Seychelles, South Africa, Swaziland, Zambia, Tanzania and Zimbabwe.

Any goods being placed on the market in one of these countries, will invariably find its way into the other member countries. No regional system exists for filing a trade mark application in respect of all the SADC member countries. As a franchisor or prospective franchisee, it is vitally important to ensure that your brand is protected in a country prior to signing a franchise agreement or commencing local operations.

A trade mark is usually the only registered portion of the ‘bundle of intellectual property rights’ which is granted to a franchisee on signing a franchise agreement. Trade marks are however territorial beings and as such it is not legally possible to, for instance, grant a license based on a South African trade mark registration in Swaziland or Namibia. Although common law rights may exist in certain countries, it will be noted from the discussion below that certain ‘first to file’ countries exist where, for lack of a more eloquent description, it is a first-come-first-serve scenario.

As a first step, in order to ensure that the franchised business has equal protection in a prospective new country or territory, it may be necessary to file national trade mark applications. Many trade mark systems are similar to the South African system, wherein an application is examined, accepted, advertised for opposition and then finally registered. Depending on the country, this process can take anything from a few months to a few years. Franchisors are therefore advised to make trade mark protection part of their long term planning.

Despite the abovementioned procedural similarities, it should be noted that certain countries have vastly differing systems. It is advisable to seek professional assistance from a skilled IP practitioner when contemplating foreign trade mark applications. There are, for instance, no intellectual property laws in force in Ethiopia. Here, a National Trade Registration Service issues a Deposit Certificate and authorises the publication of Cautionary Notices in Amharic and English newspapers, as notification of a proprietor’s rights in a certain mark, and to warn third parties that they may face legal action should they infringe upon the abovementioned rights.

ARIPO and OAPI are the two regional systems in place in Africa. Electing to register trade marks through these systems have many advantages, including the fact that it is significantly less expensive to file a regional application than to file separate applications for a mark in each of the countries where protection is required.

ARIPO

The African Regional Industrial Property Organization (ARIPO) was founded in 1976 and in 1993 the Administrative Counsel of ARIPO adopted the Banjul Protocol on Trade Marks. The Banjul Protocol provides for the filing of a single trade mark application at the ARIPO office in Harare, which will cover any member state(s) designated by the applicant.  At this stage, the only ARIPO members to have ratified the Banjul Protocol are Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe.  These countries are all considered to be common law countries, which means, amongst other things, that international agreements will only have force and effect once the relevant country enacts local legislation incorporating the international agreement into local law.

The application is first examined for compliance with formalities by ARIPO and, if satisfied that it does comply, the office will notify each designated state.  Each state so notified then examines the trade mark in accordance with its national laws and must, within 12 months of the date of notification by the office, advise the office if it objects to the trade mark on absolute and/or relative grounds including the existence of third party rights. At the end of the 12 month term, the office will register the trade mark and it will have effect in each designated state which has not objected, as outlined above.

ARIPO registrations are usually not recommended, inter alia, because some member states are unable to examine applications within the prescribed 12 month period. This means that the ARIPO registration may be granted notwithstanding the existence of conflicting marks on a national register.  Also, many of the member countries have not amended their national laws to recognize ARIPO registrations for purposes of enforcing those rights.  At this stage only Zimbabwe, Namibia and Botswana have promulgated amendments to their Industrial Property/Trade Mark Legislation, to give proper effect to the Banjul Protocol.  Therefore, should registered trade mark protection in Zimbabwe, Namibia and Botswana be an objective, it is suggested that an ARIPO application be filed which designates these three territories, as such an application is much more cost effective and, if the relevant application matures to registration, it would provide for the centralised management and maintenance of a trade mark registration in these territories.  Should registered trade mark protection in the other ARIPO member states be desired as well, it is usually recommended to, until such time as local legislation is enacted in those states to provide for the proper regulation and enforcement of ARIPO applications and registrations, file national trade mark applications in those territories.

OAPI

The African Intellectual Property Organisation (OAPI) is headquartered in Yaoundé, Cameroon. The organization was created by the Bangui Agreement of 2 March 1977, which agreement was subsequently amended in 1999. Its 16 member states are mostly French-speaking countries, and comprises Cameroon, Central African Republic, Chad, The Republic of the Congo, Benin (formerly Dahomey), Gabon, Ivory Coast, Mauritania, Mali, Guinea (Conakry), Niger, Senegal, Togo, Burkina Faso (formerly Upper Volta), Guinea-Bissau and Equatorial Guinea.

There is no provision for filing national trade marks in any of these countries and if protection is required in one or more of the OAPI countries, a centralised OAPI application will need to be filed. 

One trade mark application in OAPI can cover any number of classes, however, it may not cover both goods and services. From a franchising point of view this means that most franchises will be required to file two applications, one for goods and one for services. 

First to File Countries

In Africa, certain countries do not recognize common law rights. Therefore, irrespective of whether you are using the brand in the country it is first-come-first-serve as to obtaining the trade mark registration. The danger of not protecting a brand in these territories are that any interested third party can file and register your brand names, which should make it impossible to enter the local franchise market at any stage in the future. Countries in Africa that operate on a first to file basis are Algeria, Angola, Djibouti, Egypt, Liberia, Libya, Morocco, Sudan and the DRC. It is important to consider filing in these countries particularly for defensive purposes.

The above information is simply a broad overview of the systems available to franchise owners in Africa. If you are considering expanding into any of our neighbouring countries, or in fact to any other foreign territory, it is advisable to seek counsel from your trade mark attorney. Once the local trade mark applications have been filed, it will be necessary to amend your franchise agreement to reflect these.

André Marè is an associate with Bowman  Gilfillan Attorneys where he specializes in commercial intellectual property matters. He is a qualified trade mark attorney and fellow of the South African Institute of Intellectual Property Law. André further advises on a wide variety of Consumer Protection Law matters, focusing specifically on franchising.

By André J Marè, Bowman Gilfillan Attorneys

Bowman Gilfillan Attorneys

Phone                   : 011 669 9000