There has been a recent flurry of activity as regards the registration of service marks in Africa. Zanzibar is the latest jurisdiction to allow such registrations. This follows quickly on the heels of Ghana and, before that, Mauritius.

A summary of the position appears in the accompanying table. In the meantime, since the manner of the introduction of service marks into both Zanzibar and Ghana was unusual, the following brief comments may also be of interest.

Zanzibar

The trade mark legislation in Zanzibar is modelled on the pre-1938 British legislation. Until very recently Zanzibar used the old British classification system (50 classes of goods) and the “class headings” of that classification system formed the Third Schedule to the Trade Mark Rules.

The Trade Mark Rules were amended in 2004 by substituting the “class headings” of the international classification system (8th edition) (classes 1 – 45).

Originally it was widely believed that, until the Trade Marks Act was also amended to recognise service marks, only the goods classes (classes 1-34) could be included in a trade mark application. However some test cases were filed, and in discussions in February, the Registrar confirmed that such service marks are valid. The Zanzibar Registrar is working with WIPO to update the trade marks legislation which will, hopefully, remove other antiquated concepts before too long.

Ghana

The trade marks legislation was substantially revised and modernised by the introduction of The Trade Marks Act, 2004 which included provisions for service marks. However, although the Act has been brought into force, the implementing Regulations have not and the Registrar had held that service marks could not be filed until such time as the Regulations were also implemented.

We did not agree, and filed a service mark application to test the waters. This led to discussions with the Registrar who conceded the point, and on 1 December 2004 she issued a practice note confirming that service marks could indeed be registered in Ghana.

Countries With No Provisions for Service Marks

There are still six African countries with no provisions for the registration of service marks. Of these Nigeria is unarguably the most important. We are able to confirm that discussions are taking place which, it is hoped, will expedite a change in the legislation and introduce such provisions.

Likewise, the authorities in Zambia have confirmed that they expect to be introducing new legislation later this year which will include provisions for service marks.

We will gladly assist you should you have any questions. Please contact Spoor & Fisher Jersey for further information.

Service Marks in Africa
Country / Jurisdiction	Classification System	Separate application for each class – or Multi class system	Provisions for Service Marks
Algeria	International	Multi-class	Yes
Angola	International	Separate app.	Yes
ARIPO	International	Multi-class	Yes1
Botswana	International	Multi-class	Yes
Burundi	None	n/a	Yes2
Cape Verde	None	Cautionary Notice	Yes3
Congo ( Zaire)	International	Multi-class	Yes
Djibouti	International	Multi-class	Yes
Egypt	International	Separate app.	Yes
Eritrea	None	Cautionary Notice	Yes3
Ethiopia4	International	Multi-class	Yes
Gambia	Old British5	Separate app.	No
Ghana	International	Separate app.	Yes
Kenya	International	Separate app.	Yes
Lesotho	International	Multi-class	Yes
Liberia	International	Multi-class	Yes
Libya	International	Separate app.	Yes6
Madagascar	International	Multi-class	Yes
Malawi	International	Separate app.	No
Mauritius	International	Multi-class	Yes
Morocco	International	Multi-class	Yes
Mozambique	International	Separate app.	Yes
Namibia	International	Separate app.	Yes
Nigeria	International	Separate app.	No
OAPI	International	Multi-class7	Yes
Rwanda	International	Multi-class	Yes2
St Helena	International	Separate app.	Yes
Sao Tome e Principe	International	Multi-class	Yes
Seychelles	International	Separate app.	Yes
Sierra Leone	Old British5	Separate app.	No
Somalia8	Former Italian9	Multi-class	Yes
South Africa	International	Separate app.	Yes
Sudan	International	Separate app.	Yes
Swaziland	International	Multi-class	Yes
Tangier	International	Multi-class	Yes
Tanganyika	International	Separate app.	Yes
Tunisia	International	Multi-class	Yes
Uganda	International	Separate app.	No
Zambia	International	Separate app.	No
Zanzibar	International	Separate app.	Yes10
Zimbabwe	International	Separate app.	Yes

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1.  Although ARIPO allows service marks, not all member-States recognise service marks in their national laws, and so these should be excluded from any such designation.
2. The laws in Burundi and Rwanda make no mention of service marks, but in practice the Registrars allow marks to be registered for goods and services
3. There are no provisions to register trade marks. Cautionary notices can be published for goods and services
4. Ethiopia has a non-statutory registration system. Current practice is to register for all goods and services of interest and to mention international class numbers.
5. Old British classification system has 50 classes of goods. No services.
6. Until recently Libya had its own system for classifying services, but this has been abandoned in favour of the International system
7. Although OAPI is a multi-class system it is not possible to mix goods and services in the same application.
8. At present no filings are possible in Somalia. These comments apply to the situation before the current civil war which has resulted in the closure of the Registry.
9. The former Italian classification system had 49 classes. Class 49 was “miscellaneous” and Registry practice was to allow services to be included in this class
10. Although the Act has not been amended to recognise “service marks”, the Registrar has permitted them since adopting the International classification system in 2004.