Africa: First to file v first to use

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27 July 2015

One of a business’s most valuable assets is its brand and, therefore, its trade mark.  A business invests in its brand every time it does any advertising or promotion and the last thing that anyone wants is another business popping up and selling inferior goods or services under the same brand.  Unfortunately this is, however, something that regularly happens in Africa where hundreds of different languages are spoken and not everyone can read the labels.

Numerous countries in Africa do not have anti-counterfeiting legislation or other measures in place to prevent consumers from being taken advantage of.  Even where such legislation is in place, it is not always effectively policed.  Therefore, whereas one would have more than one basis on which to take on infringers in developed countries, in a lot of African countries a business can only rely on its trade mark.  Litigating in Africa is also extremely expensive and, given substantial backlogs and unavoidable postponements or interim applications, the process can be lengthy.

The strength of a company’s case against infringers depends on the law in each African country.  In some countries common law rights (for example rights acquired through use) are not recognized and the law does not provide for rights to a trade mark to arise otherwise than by registration.  In such countries, the first entity to file an application for registration of a mark will have the rights thereto, regardless of whether another entity has built up a reputation in the mark in that country.  This is known as the ‘first to file’ rule.  Countries in which the ‘first to file’ rule applies include Angola, Nigeria and the Democratic Republic of Congo.

The ‘first to file’ rule also applies to the Organisation Africaine de la Propriété Intellectuelle (OAPI or AIPO) system, unless the applicant is acting in bad faith and should have known that another person had a prior right to use the mark.  OAPI is a union of predominantly French-speaking countries which established common intellectual property laws and a single Intellectual Property Office, situated at Yaoundé, Cameroon.  Its members are Benin, Burkina Faso, Cameroon, Comoros, the Republic of Congo, Côte d’Ivoire, Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Central Africa Republic, Senegal, Chad and Togo.  It is not possible to register trade marks in these individual countries but an OAPI registration covers all of the member countries.

In other countries, common law rights are recognised and prior use in a country may entitle an entity to institute infringement proceedings.  Such countries include Tanzania, Ethiopia, Uganda, Rwanda and Burundi.  A business would, in other words, be able to use common law rights (for example use or reputation) as a basis upon which to oppose an application for registration or to institute infringement proceedings.  Whether or not it would be successful would depend on whether it can prove that it has prior rights.

A number of countries also recognise well known marks, for example Rwanda, Tanzania, Zanzibar and Ethiopia.  This means that, in these countries, a business could argue that, even though it has not registered its mark, its mark is well known and entitled to protection.  Making out a case that a mark is well known in a country is generally an onerous burden as it does not suffice to show that the mark is well known internationally.  The business would have to show that the mark is known to the citizens of the specific country.

While, as a rule, it is recommended that one applies for registration of one’s trade mark in any country in which one intends to trade, it is even more important to do so if one intends to trade in a first to file country.  Not doing so may leave one without a remedy if a third party decides to register the trade mark there first.  Even where one intends to trade in a country which is not a first to file country, having a registered trade mark means the trade mark owner need not prove use or reputation – thereby cutting down on litigation costs.

For help in deciding where you should register your trade mark, contact:

MYRA CRAVEN
Attorney
Department: Trade Mark
Tel: +27 11 324 3119
Email: myrac@dmkisch.com

Author: Myra Craven