IP in Africa - Latest Developments
African economies are booming and inward investment is fast on the rise. In turn, the need for a robust IP protection and enforcement strategy for trade marks, patents and designs is fundamental for companies with interests in Africa.
This has put pressure on African countries to update IP laws that are, in certain cases, somewhat dated. Africa remains a challenging place for IP owners yet it’s fast becoming an exciting one too.
Here is an update of what has happened in Africa recently.
- On 31 July 2014, new copyright legislation came into force, the Copyright and Related Rights Law, no. 15/14. Important features include the following:
- The fact that registration - although not a requirement for subsistence of copyright - is a requirement for enforcement. So registration with the National Copyright Office is likely to become very important.
- The expression ‘related rights’ is defined to mean the rights of performers, record producers, broadcasters and organisations transmitting works by other techniques. There is an increase in the term of copyright protection from 50 years (from the date of the author’s death or the date of the performance) to 70 years. There are, however, exceptions for photos (life plus 45 years), and broadcasts (35 years from the date of broadcast).
- There is provision for moral rights which survive the assignment of copyright.
- The author is generally the first owner of the copyright, but there are exceptions in cases of works created in a relationship of employment and commissioned works.
- There is provision for seizing infringing goods whilst legal proceedings are underway, as well as for damages and the destruction of infringing material and equipment used in the infringement.
The current legislation, the Burundi Industrial Property Law, came into force on 28 July 2009. This provides that all trade mark registrations obtained after this date will have a ten-year term which is indefinitely renewable. Under the earlier, repealed law, trade marks were registered for indefinite terms. Although it was initially understood that these registrations would remain in force indefinitely, it has been announced that these older registrations will be renewable for ten-year periods with effect from 28 July 2019. At this stage it’s not yet clear when these renewals can be done, or by what date they must be completed.
Following the implementation of the new law in Ethiopia on 24 December 2012, the deadline for the re-registration of cases filed under the old law (prior to 7 July 2006) has now passed. It is still possible to file a new application for cases not re-registered, but such applications will not be able to claim seniority of previous rights. It is also necessary to ensure that you have applied for a “new law” certificate for registrations filed after 7 July 2006, and for which an “old law” certificate was previously issued. Such applications, if not already made, should be submitted as soon as possible and in any event before the next renewal date of the registration in question. The volume of work received by the Registry in the last two years, combined with some changes in key personnel, has led to serious delays in several areas. We continue to monitor the situation closely and provide support and guidance to officials.
Readers will know that traditional knowledge is a big issue in Africa, with South Africa having introduced legislation that incorporates traditional knowledge within the existing IP statutes. Another approach is to protect traditional knowledge as a sui generis right. The Gambia has recently ratified an ARIPO traditional knowledge initiative, the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.
The new Plant Breeder’s Bill has been criticised by one local commentator on the basis that, instead of adopting the International Convention for the Protection for New Varieties of Plants of 1991 (UPOV 1991), the country should have opted for a sui generis law that is more appropriate to local conditions.
Kenya is in the process of amalgamating a number of IP-related bodies including the Anti-Counterfeit Agency, the Kenya Copyright Board and the Kenya Industrial Property Institute into the Intellectual Property Organisation of Kenya. The aim is apparently to cut bureaucracy and improve co-operation in enforcement measures. There will seemingly be no substantive changes to the operating statutes. One substantive change that has been brought about, however, is the re-introduction of Capital Gains Tax, which will apply to all sales including sales of IP assets. It’s not yet clear how CGT will work in the case of IP, especially in the case of self-created IP where there is no acquisition cost to work from.
Although the Patents Office and the Trade Marks Office both survived the war – with the Patents Office resuming normal operations in 2012 and the Trade Marks Office doing so in 2013 – recent unrest has resulted in the Trade Marks Office closing indefinitely. The Patents Office remains open as it is completely separate to the Trade Marks Office. The Patents Office is located at the Industrial Research Centre, which is run by government officials.
On 18 December 2014 the new Industrial Property Law, No. 23 -13, which amends the existing act, No. 17/97, came into force. There is a lot of substance in the new law; below is a summary of the most noteworthy changes. As regards patents, there is now scope for divisional patent applications. The new law provides for mandatory substantive examination of patent applications and there is provision for compulsory licences for non-exploitation of an invention.
The law confirms that annuities are only payable once the patent is granted. Very significantly, the European Patent Office (EPO) has entered into an agreement with the Moroccan Industrial and Commercial Property Office (OMPIC) allowing for the validation of European patents. The validation agreement will enter into force on 1 March 2015, from which date Morocco may be designated in a European patent application (or a PCT application designating Europe). A European patent validated in Morocco will have the same legal effect as a Moroccan patent, and will be subject to Moroccan patent law. Morocco will not be a member of the European Patent Convention (EPC), nor a so-called ‘extension state’. Instead, the validation agreement is a bilateral arrangement between the EPO and OMPIC.
On the trade mark front, there will now be substantive examination of trade mark applications, which means that applications can be refused for example on the grounds that a trade mark is non-distinctive. As with patents, there's provision for the division of applications, in this case on the basis of goods or services. The opposition procedure has been improved in that the term for issuing decisions has been reduced, and in cases where the trade mark applicant does not respond to the notice of opposition within a two-month period the Office will go ahead and make a decision. As for renewals, it will in future only be possible to renew a trade mark in exactly the form in which it is registered. There is special provision for tackling counterfeiting.
The customs authorities will now have the power to detain counterfeits that are in transit (this power will extend to goods that are misleading as regards geographical details and designations of origin). There is also provision for requiring the infringer to pay the cost of warehousing and destroying the goods. The new law makes provision for designs and models. Registration will be for a five-year period, and this term will be extendible for four further five-year periods. Once again there is scope for divisional applications. An application for registration will be published within a period of six months, although it will be possible to delay publication for a maximum period of 18 months. Various enforcement measures have been introduced: there is provision for longer prison terms and heavier fines for infringers; the IP owner has the option of choosing between civil action and criminal proceedings; and the presiding judge in an infringement case has the power to order the seizure of goods, as well as other materials, instruments and documents relevant to the alleged infringement. Lastly, there are some provisions of a miscellaneous nature.
There is provision for a dating system, which means that the creator of a work can record the date of the work’s creation. The thinking is that this recordal can serve as proof if the date of the work’s creation becomes an issue, but this recordal will only serve as proof for a period of five years. There is a provision that says that any interested person can now file remarks regarding the validity of an IP application within a period of two months – the IP applicant will have a right of reply, also within a two-month period. There is also a provision that says that there is a right of reply to any rejection by the Office – the period here is one month. The term for filing priority documents has been increased from three to four months. Lastly, there will be greater regulation of the IP profession, with the Office drawing up a list of approved IP practitioners.
The new Nigerian Copyright e-Registration System (NCeRS) is now in force. The turnaround time is supposed to be quick - around 10 days – and there is a searchable database.
In a separate development, the Nigerian trade mark registry has tightened up its practice as regards time limits. In particular, the two-month term for responding to official actions on trade mark applications or refusals based on prior rights will now be strictly enforced – the application will be deemed abandoned if there is no response within this period, although an extension can be sought if there are good reasons for it.
This change is, in part, down to the fact that there is much greater demand for trade mark registration in Nigeria than there was in the past.
South Africa’s IP jurisprudence is probably the most comprehensive and the most advanced in Africa. Some very contemporary issues are finding their way to the South African courts. There was recently a decision on keyword usage of trade marks, where the court followed the approach of the European courts and held that if it’s clear to a reasonably astute internet user that the ads generated by the keyword are not those of the trade mark owner then there is no problem. A case involving the legality of news aggregation, in light of the ‘fair use’ copyright defences, is pending.
Another interesting issue is the question of whether South Africa will move from a deposit system to an examination system for patents. There have been calls for change for some time, especially in light of the fact that drugs patents are controversial, and the practice of ‘ever-greening’. In 2013 the South African government issued an IP policy document that raised the possibility of a deposit system. In September 2014 Professor Caroline Ncube of the University of Cape Town discussed this issue in an article that appeared in the Journal of Intellectual Property Law and Practice. In the article she deals with the options, given that South Africa is likely to have a capacity problem when it comes to examination. Options discussed include limiting examination to certain industries like pharmaceuticals, collaborating with other IP offices, and involving universities and research institutes in the examination process.
South Sudan gained full independence from Sudan in 9 July 2011, which means that Sudanese trade mark registrations no longer have any effect in South Sudan. Unfortunately South Sudan has not passed its own trade mark legislation either which means, quite simply, that there is no trade mark law. Notwithstanding this, the Business Registry of South Sudan is accepting and processing trade mark applications, and it is being guided by the Sudan Trade Marks Act of 1969. So what effect do these applications have? Although they have no official effect, the general feeling is that they will be recognised in the sense that a certificate issued under this system will be cited against a later application, and may possibly even be recognised in litigation. The received wisdom also is that any trade mark legislation that is eventually passed will ratify and recognise registrations that were granted under the informal system, and that they will run for ten years from the filing date. It is therefore worthwhile filing in South Sudan. The filing process under the informal system is quite particular. Only single-class applications may be filed; it is necessary to submit a notarised Power of Attorney and a notarised Certificate of Incorporation or Extract from the Commercial Register; and it is also necessary to submit a representation of the mark and a picture or photo showing how the mark is to be applied to the goods claimed. In cases where the application covers beverages for human consumption, the picture requirement is replaced by one requiring real samples of the container containing the beverage and showing the trade mark to be submitted – this is apparently so that it can be tested for public health reasons. At this stage there are no corresponding arrangements for patents, designs or other IP rights in South Sudan.
On 3 July 2014 Tunisia signed an agreement in terms of which it agreed to allow for the validation of European patents in its country. This agreement will, however, not become effective until such time as the national law is amended.
Official fees were increased across the board by the Patents and Companies Registration Agency (PACRA) on 20 August 2014. These increases are not substantial. However, the official fee for a trade mark application for example, has gone up by approximately £14. Zanzibar Although trade mark law was changed by the Trade Marks Act of 2008, there are still no regulations in place. Nevertheless, the Registrar, who is using the old 1932 Rules, is increasingly willing to modify the forms of the old Rules in order to accommodate things that appear in the new act, such as colour claims and the recordal of licenses.
Zimbabwe deposited its instrument of accession to the Madrid Protocol on 11 December 2014, and this will enter into force on 11 March 2015. Zimbabwe has, however, not yet amended its domestic law to make provision for, and give effect to, international registrations. Until such time as Zimbabwe amends its domestic law, it is recommended that trade mark owners should continue to use the national registration system.
IP owners must note that international registrations obtained in so called ‘common law countries' – countries where international arrangements need to be officially incorporated into the domestic law before they become enforceable – is a very risky business, because it may well eventually transpire that such registrations are unenforceable and of no legal effect.
ARIPO – the Banjul Protocol
ARIPO is the regional registration system that applies in much of English-speaking Africa. Although originally conceived to simply cover patents, the ARIPO regional registration system was extended to cover trade marks in 1997 through a document known as the Banjul Protocol. In terms of this system, it’s possible to designate one or more of the following countries in a single trade mark application that is filed with the ARIPO office in Harare: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, United Republic of Tanzania (Tanganyika and Zanzibar) and Zimbabwe, with Rwanda likely to come on board soon. In August 2014 there was a meeting of the ARIPO trade mark amendment working group. This group discussed one of the problems that exists with the trade mark system, namely the fact that a number of member countries do not provide for multi-class filing despite the fact that the ARIPO system does. They discussed the possibility of including an individual fee structure and the possibility of acceding to the Hague Agreement concerning the International Registration of Industrial Designs. They also spoke about the much welcomed ICT upgrade, in terms of which ARIPO will move to an electronic system thanks to a US$5.8 million donation from South Korea. The biggest problem with ARIPO remains the fact that a number of member countries still have not incorporated the Banjul Protocol into their domestic laws. This makes the validity of ARIPO registrations that cover these countries uncertain.
OAPI is the single registration system that covers the following French-speaking African countries:
Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.
In September 2014, a workshop involving officials from the OAPI office and the European Patent Office (EPO) was held, aimed at increasing co-operation between the offices to provide training, raise awareness and improve technical infrastructure.
As for trade marks, OAPI deposited its instrument of accession to the Madrid Protocol on 5 December 2014, and this will enter into force on 5 March 2015. This will have the effect that trade mark owners will, as an alternative to filing an OAPI application, be in a position to cover the OAPI countries by way of an OAPI designation to an international registration. OAPI has, however, not yet amended its law to give effect to international registrations, and there is no indication that it intends to do so. The law in question is the 1999 Edition of the Bangui Accord (not to be confused with the Banjul Protocol regarding ARIPO trade mark registrations). The general view is that, until such time as the OAPI law is amended, inåternational registrations designating OAPI will not be valid and enforceable.
The reason for this is that, although the law specifically refers to a number of international arrangements such as the Paris Convention, the Berne Convention, and the Hague Agreement, there is no mention of Madrid whatsoever. It is recommended that trade mark owners continue filing OAPI applications until such time as the amendments are made.