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21 February 2013

The Territorial Nature of Trade Mark Protection

Sales for your latest branded service or product have now exploded. Now it is time to expand the business to countries outside South Africa, be it to our African neighbours or further abroad to the US, Europe or Australia.

If you have been following this legal column over the past 2 years, you would have, no doubt, taken the free legal advice (which is rarely offered in this industry) and ensured that you have followed the necessary steps to protect your brands with the Trade Marks Office.  However, with which Trade Marks Office did you seek protection with?

Trade Mark protection is territorial and therefore protection is required in each and every country where there is active business, or an intention to conduct business, relating to the particular brand.  Put simply, if you are selling or intend on selling a product in Mozambique, the product trade mark / brand will need to be registered in Mozambique.  There are certain countries which have signed treaties, allowing an applicant to claim protection in a number of countries through a single trade mark application.  The most popular of these, which can be effectively used by South Africans in Africa, is the African Intellectual Property Organization (OAPI) being the organisation that ensures the protection of intellectual property rights in most African French-speaking countries.  Currently, a single OAPI registration grants protection to 16 African member countries.  If your focus is further abroad, another effective registration is a Community Trade Mark (CTM).  Here one registration extends protection to 27 European member countries.

Although there is an effort to harmonise the trade mark laws in each country, these laws do differ.  Furthermore, protection strategies also differ from country to country.  For example, certain countries offer a first to file policy, meaning that prior user rights are not honoured.  The danger here is that you may have been selling a particular product in a country for some time but if the trade mark was never registered and a third party subsequently registers it, that third party may be able to prevent you from continuing to sell that branded product in that country – unless you are in a position (usually at prohibitive cost and delay) to prove that your brand was well-known in that country prior to the other parties application to register it.  In such countries, we recommend that clients do not delay in seeking trade mark protection.

Another peculiar risk to brand integrity includes the common practice in certain African countries for infringers to copy a product label instead of the particular product name.  This is especially true when it comes to beverages.  In these instances, clients are advised to seek protection for the product get-up (i.e. the overall look and feel of the product), in addition to the product name.

A further consideration is that in most African countries, anti-counterfeit protection is only granted to products for which the trade marks have been registered.  Therefore, if the risk of counterfeiting is high in respect of a particular business or product, clients are encouraged to seek trade mark protection without delay.

Certain African government offices have a reputation for prolific delays in their service delivery and the Trade Marks offices in these territories are no different.  You should therefore be aware of the particular time line involved in the trade mark registration process. However, as long as a pre-filing search reveals that there are no conflicting marks, there is little risk of an issue arising if you immediately commence using your brand and couple this with an application to register it.

Therefore, if you intend on expanding your business past our borders, due consideration should be given to protection in such territories.  DM Kisch can assist in formulating the best protection strategy for your business as well as seeking such protection, in the relevant countries, on your behalf.