Circular No. 346: Africa Newsletter (Trade Marks)
One of the most common problems that we experience in the registration of trade marks in Africa is the delay that occurs in the advertisement of applications for opposition purposes. This is usually due to a lack of resources and, more particularly, a lack of co-operation between two government departments - especially if it requires the flow of funds from one to another.
Another problem concerns the ability of a country to adhere to an International Convention such as the Madrid Arrangement or ARIPO without giving any thought to an amendment of the national laws so as to establish the necessary procedures and enable the courts to recognise such registrations. We would, therefore, caution owners of such registrations that, in the event of a local dispute, they may find their "registration" unenforceable.
There have been some developments in Africa over the past year or so and the following snippets may be of interest to our clients and associates. If you need more detailed commentary on the position in any African country then please do contact us.
Angola – Good Progress to Report
Angola’s first IP law came into force a few years ago and with it a new Industrial Property Office. After a somewhat hesitant start we are pleased to note that the Registry has now settled down and many of the initial teething problems have been resolved.
Matters are now progressing efficiently. The first two issues of the Bulletin have been published and certificates of registration are being issued.
ARIPO – Trade Marks
As you will see from our separate circular, there are now five countries that can be designated in an ARIPO trade mark application and these are:
- Tanzania (Tanganyika)
However, you will also see that we have serious reservations as to the advisability of obtaining trade mark protection via the ARIPO route, as it is still unlikely that these will be enforceable in the member States.
Botswana – Staff Return from Extended Leave
Regrettably there has been no improvement with regard to the examination of trade mark applications at the Botswana Registry. During a recent meeting with Registry officials, no firm indication was given as to when examination of applications would recommence. The delay and subsequent backlog is due to two fairly senior members of the Registry staff having been sent on extended study leave. They have now returned, and an undertaking was given by the Registry to attend to examination as soon as possible.
Egypt – Only Three Months Allowed for Late Filing of Documents
The Registrar has imposed a strict deadline of three months for the late filing of any documents. Since most supporting documents have to be legalised by an Egyptian Consul we recommend that filing is delayed until all documentation is to hand.
This is not always practicable in convention cases but clients must be aware that the term is non-extendible and that failure to file in time will result in the case being deemed abandoned.
Equatorial Guinea – Joins OAPI
Until now there have been no provisions for the registration of trade marks in Equatorial Guinea. However, Equatorial Guinea has announced its intention to join OAPI. It filed its instrument of accession on 23 September 2000 and will become the 16th Member State of OAPI with effect from 23 November 2000. Therefore, all new applications filed with OAPI from 23 November will also extend to Equatorial Guinea. Owners of existing OAPI registrations will be able to extend them to Equatorial Guinea, and the deadline for filing such requests will expire on 23 May 2002. Clients wishing to extend their OAPI registrations should contact Spoor and Fisher Jersey as soon as possible.
Eritrea – Still no IP Provisions
There are still no provisions for the registration of trade marks in Eritrea. Thus far the government has been pre-occupied with its border disputes with Ethiopia, but it is hoped that it will turn its attention to IP matters at some time in the near future. In the meantime, we continue to monitor the situation and will keep clients and associates informed.
Gambia – A Promise of a More Hopeful Picture
Trade mark applications must be advertised in the Trade Marks Journal for opposition purposes before a mark can be registered. There have been no advertisements of accepted trade marks in Gambia for many years and, with a view to finding a practical solution to this problem, one of our partners recently visited the country and discussed matters with the Registrar of Trade Marks and the Government Printer.
Various promises were made which, if implemented, should bring about an improvement in the situation.
The original term of registration in Gambia is 14 years from the date of filing. Many applications have now been pending for 14 years and the question arises as to whether it is necessary to pay a renewal fee at this stage. It is not necessary to pay the renewal fee until the mark is registered. However, if an applicant prefers to pay the renewal fee on the 14th anniversary of the filing date the Registrar will accept it.
Ghana - More Regular Advertisement of Trade Marks
In Ghana, trade mark applications must be advertised in the Commercial and Industrial Bulletin for opposition purposes before a mark can be registered. Here too some delays have been experienced and one of our partners visited the Registry to discuss the problems. We are hopeful that we will now see an improvement in the general situation.
Kenya - Yet More Delays
There are still long delays in the advertisement of accepted trade mark applications due to problems with the funding of the government printer. There have been some recent discussions with the Registry and it is hoped that this will result in some improvement.
Lesotho – Backlog Diminished
Recently, a team comprising three Spoor and Fisher staff members was warmly received by the Lesotho Registry; after we had arranged to train a number of their staff in 1999 and provided much needed legal publications pertaining to Intellectual Property. Conditions at the Registry have, however, not improved much. Due to the lack of proper filing facilities and a comprehensive Register, full registrability and infringement searches cannot be conducted. Despite the above, we managed to obtain approximately 300 renewal certificates, 500 certificates of registration, 100 assignments / registered user certificates and arranged for the advertisement of 115 acceptances during the visit.
Liberia - Adopts International Classification and Changes Numbering System
Liberia has adopted a new numbering system on registration or renewal. The old system whereby the digits of the registration corresponded to the date of the registration or renewal is now replaced.
Until recently, a trade mark registration simply listed all goods/services of interest. New trade mark applications will now be classified according to the International classification system, and existing registrations will have their specifications classified accordingly upon renewal. An application may cover any number of classes of goods and/or services.
Mauritius – New IP Law Expected in Near Future
Earlier this year a new IP law was drafted but its content has not been made public. It was expected to be debated in parliament but the ensuing elections have resulted in a delay. It is difficult to predict when new legislation will actually come into force but we would expect this to be a modern piece of legislation and dealing with the GATT/TRIPS obligations. In particular, we expect Mauritius to introduce provisions for the registration of service marks and to adopt the International classification system.
Morocco – New IP Legislation
New Intellectual Property legislation has been published and will come into force six months after the publication in the Official Bulletin of the Decree of Application. At the time of writing, this Decree had not yet been published so the new Law will certainly not come into effect during the year 2000. One of the main effects of the new law will be to unify the registries of Morocco and Tangier. It will no longer be necessary to register trade marks in the separate territories. However, because of the uncertainty as to how long it might take for the introduction of the new law, trade mark owners are advised to continue to file applications in both Morocco and Tangier, until such time as the legislation has come into effect.
Mozambique – First IP Bulletin Published
Mozambique’s new IP law came into effect on 5 July 1999. The Registry has coped admirably with the enormous volume of trade mark applications that have been filed, and the first edition of the Mozambique IP Bulletin was published on 30 March 2000. This contained details of applications for trade marks, patents, designs and names filed between 5 July 1999 and 31 December 1999. There was an initial suggestion that the advertisements were as a matter of record only and not the advertisement for opposition purposes. However, shortly before the expiry of the 60 day deadline the Registrar confirmed that this was indeed the advertisement for opposition purposes. Fortunately we had anticipated this and were able to file all oppositions instructed by our clients before the expiry of the deadline. A review of the Official Bulletin revealed several examples of local companies attempting to register imitations of well known trade marks. Therefore, clients who have not already done so are advised to consider registering their more important marks in Mozambique. Despite having accepted trade mark applications lodged in terms of the Madrid Protocol and Agreement, the Registry has not examined or advertised the acceptance of any such application. We recommend that local applications be lodged until such time as procedures have been put in place with WIPO. We have also been called upon to comment on the Industrial Property Code and made subsequent recommendations pertaining to, inter alia, the appointment and recordal of agents in the Register and Industrial Property Journal to facilitate service of documents, procedures to be followed in opposition proceedings, the inclusion of specifications in advertisements, the examination of trade mark applications lodged in terms of International Conventions, etc. We expect the publication of the second volume of the Industrial Property Bulletin before the end of the year.
Namibia – Long Delays Still Experienced
Examination of trade marks currently takes approximately 3 years. However, once examined, and as a direct result of the preparation of all draft documentation by our offices, the former delay in advertisement and registration of trade marks has been reduced substantially.
Nigeria – Two Trade Mark Journals this Year so Far
As with many other English-law countries in Africa, many of the delays in the trade mark registration process arise because of difficulties in the advertisement for opposition purposes. Nigeria has been experiencing such problems for many years but is making an attempt to improve the situation. In the last few years they have published one substantial Trade Marks Journal each year. However, the year 2000 has seen the publication of two issues the first on 4 January 2000 and the second on 31 May 2000. There were fewer inaccuracies than in recent Journals and it is hoped that this is a sign of an increased regularity and efficiency in the publication of accepted marks in the future. As a result of these publications, however, a great many notices of opposition were filed and this has accordingly put greater pressure on the already limited resources of the Nigerian Oppositions Office. In Nigeria, any notice of opposition must be lodged within two months of the date of the advertisement of the offending application and the Registrar has no discretion to allow an extension of time at this stage.
OAPI – Extension of Rights to New Member States and More Changes Expected
As advised in our circular no 336, OAPI allowed owners of existing registrations until 4 June 2000 to extend those rights to cover Mali and/or Guinea and/or Guinea-Bissau. That deadline has now passed and in theory it is no longer possible to extend existing OAPI registrations to these new member States. It is hoped that OAPI can be persuaded to change the rules and allow such extensions at any time. In the meantime, anyone requiring protection in these countries will have to file a new OAPI application. As reported separately in this circular, EQUATORIAL GUINEA will become a member State of OAPI with effect from 23 November 2000. Finally, we can report that substantial changes are expected to be made to the OAPI law in the not too distant future. It is believed that OAPI will do away with the need to file "proof of use" on renewal and introduce more sensible provisions for the late recordal of assignments and other post registration matters.
Seychelles – Blame the Computer
The once efficient registry is now taking an extraordinary amount of time to handle routine matters. For example, it can take nine months for a filing receipt to be issued. The delays are blamed on computerisation.
Sierra Leone - Despite all its Difficulties, an Efficient Registry
Sierra Leone has had more than its share of publicity over the past few years with the atrocities that have featured in the international media. It is, therefore, ironic to be able to report that this is one of the more efficient Registries in West Africa and that whilst there is a slight delay, the advertisement of trade mark applications is far more advanced than in most other West African countries.
Somalia – No News
We regret that despite some progress on the political front, there is still no news as regards the re-establishment of the Industrial Property Office in Somalia.
South Africa – Searches Interrupted but Additional Examiners Appointed
For a number of weeks in September 2000, trade mark registrability and infringement searches could not be conducted through the official records of the South African Trade Marks Office. After consultation with the Registrar of Trade Marks, the Chief Director, Director General and Minister of the Department of Trade and Industry, access to a temporary index search facility was, however, established. This facility makes it possible to conduct registrability and infringement searches but it does not extend to proprietor or device searches. Due to the earlier inaccessibility and current limitations of the trade marks records there is a considerable backlog which we will need to work through using all the resources at our disposal. In instances where a delay in the filing of an application for registration of a trade mark could seriously prejudice the rights of the applicant, it is our recommendation that we immediately proceed with the filing of such application. We are hopeful that full access to the official search module will be restored in November 2000. The Registrar of Trade Marks has also agreed to recall a recently published practice ruling which placed severe restrictions on the restoration of marks and extensions of the opposition and prosecution terms after consultation with the South African Institute of Intellectual Property Law. On a more positive note, we are pleased to advise that ten additional examiners have been appointed which should see a reduction in the current 30-month delay in examination. Business and information technology processes are also being reviewed which should see an increase in overall efficiency.
Swaziland – Maintaining Former Standards
The Swaziland Registry continues to function reasonably well and, apart from minor inaccuracies, maintains its records in a good state and responds to official applications in a number of months. Delays, however, occur from time to time in respect of trade mark examination and the advertisement of acceptances.
Sudan – New Formalities on Assignments
Until recently, it was not necessary to lodge an Assignment in Sudan as these were recorded on the basis of forms TM11 and TM12 alone. However, the Registrar has now announced that Deeds of Assignment must also be filed. Furthermore, they will not be accepted unless they are legalised up to a Sudanese consulate and lodged within six months of the completion of the assignment.
Tanganyika – Trade Mark Regulations Published at Last
The Trade and Service Mark Act 1986 came into force on 1 October 1994 but The Trade and Service Marks Regulations, 2000 were only published earlier this year. Therefore, it took some 14 years from the time the Act was first published for the legislation and subsidiary legislation to be brought into force. There are some anomalies. For example, the Act requires that proof of use be filed on renewal but the Regulations and Forms are silent on this point. Conversely, the form to be used to record an assignment still contains the wording from the old Act as regards the need to seek the Registrar’s directions to advertise an assignment if it is without goodwill and the mark is in use. However, there is nothing in the Act or Regulations requiring such a procedure.
Tangier – Changes in Sight
As will be seen from our comments under MOROCCO new legislation is expected to be brought into force which will do away with the need to register patents and trade marks separately in Tangier and Morocco.
Zambia – Backlog in Advertisements Now Gone
The Government Printer suspended publications of the Patent and Trade Marks Journal for some time whilst a new format and procedure was settled. He has now completely caught up with the backlog and applications are advertised efficiently.
Zanzibar – Huge Improvement in Publication of Trade Marks
Until recently, there had been no publication of accepted trade marks for many years; and the situation was then confused by the fact that some practitioners had persuaded the Registrar to issue certificates of registration even though the application had not been advertised, as required by law, for opposition purposes. As a result of an initiative by Spoor and Fisher Jersey the Government Printer is, once again advertising trade mark applications in the Zanzibar Gazette. We have cleared the backlog of our clients’ applications awaiting advertisement, and new cases are being advertised within a few months of acceptance. Any trade mark owner holding a certificate of registration issued without advertisement should be aware that the so called "registration" is probably invalid and unenforceable. Therefore, they should arrange for it to be advertised as soon as possible. Anyone needing assistance in this respect should contact our Jersey office.
Zimbabwe – Still One of the Best
The Zimbabwean Registry is currently still one of the most efficient and accurate on the African continent, despite the recent political upheaval. Applications are routinely examined in seven to nine months, an accurate manual search facility is maintained and considered official actions are issued.
Africa Tariff Guide
We have made no alterations to our own charges for trade mark matters in Africa for several years (other than to pass on increases in our disbursements). In view of increasing overheads, we have now reviewed our charges and have introduced a small increase in our fees. This is reflected in the enclosed copy of our Africa Tariff Guide which provides details of our inclusive charges for filing trade mark applications and trade mark renewals throughout Africa. If you need any further tariff information then please contact either office.
Spoor & Fisher Jersey