Protecting your ideas in Africa
29/06/2009

Africa is becoming an increasingly attractive market for products and services both from a South African and a broader perspective. With increased opportunities comes increased risk, however, and this risk must be managed when you decide how to protect your intellectual property in the region.

Intellectual property (IP) is territorial in nature. That means it is necessary to take steps to protect your IP in countries that may possibly fall outside your immediate sphere of business to ensure that your rights are protected in future should you decide to enter regional markets down the line.

In this, the first in a series of articles about protecting IP in Africa, we will take a look at the African Regional Intellectual Property Organisation (ARIPO). This is a regional system used primarily by countries in English-speaking Africa.

Regional systems of IP protection offer many advantages but above all they must be cost competitive and must offer a real and tangible right that can be enforced against third parties should the need arise.

ARIPO is an organisation comprising 16 member states. It was established in 1976 and deals with the protection of all types of IP, including trade marks, patents, industrial designs and utility models. Currently, the member countries are:

Botswana	Gambia	Ghana	Kenya
Lesotho	Malawi	Mozambique	Namibia
Sierra Leone	Somalia	Sudan	Swaziland
Tanzania	Uganda	Zambia	Zimbabwe

Together, these countries have a combined population of 110 million people and a GDP of over US$230 billion.

Trademarks

The registration and protection of trade marks is governed by the provisions of the Banjul Protocol. At this stage, only eight ARIPO members are signatories to the Banjul Protocol. These are:

Botswana	Lesotho	Malawi	Namibia
Swaziland	Tanzania	Tanzania	Zimbabwe

The Banjul Protocol is not without problems. The practicalities of obtaining protection have not been considered carefully enough and there are problems which must be addressed if ARIPO is to make the Banjul Protocol attractive to potential applicants.

First of all, the Banjul Protocol provides a period of 12 months for the designated states to examine an application for a new trade mark. This time period is ample for some countries but unrealistic for others, where examination simply will not happen within this time period. If no response is received, then ARIPO takes it that the states have no objections and the application is accepted for registration. Without proper examination in all member states it is possible that trade marks are being registered under the ARIPO system in the face of clear competing rights in countries where the application has not undergone any examination.

This, together with the problematic provisions relating to opposition procedures, means that it can, in some cases, be very difficult to stop an ARIPO trade mark application proceeding to registration in some countries if the registry does not manage to examine the application before the 12-month cut-off period.

Furthermore, only Botswana has incorporated the provisions of the Protocol into its domestic legislation. Accordingly, the validity of a trade mark registered under the ARIPO system and the possibility of enforcing that trade mark are areas that may prove problematic when a dispute arises involving a registered ARIPO trade mark.

Patents and Designs

The Harare Protocol for the protection of patents, industrial designs and utility models is ARIPO’s success story. Fifteen of the 16 members of ARIPO are signatories to the Harare Protocol and as such can be designated in an ARIPO patent or design application.

Current signatories to the Harare Protocol are:

Botswana	Gambia	Ghana	Kenya
Lesotho	Malawi	Mozambique	Namibia
Sierra Leone	Sudan	Swaziland	Tanzania
Uganda	Zambia	Zimbabwe

Somalia, despite being a long-standing member of ARIPO, has not signed up to either the Banjul or Harare Protocols and therefore cannot be designated in an ARIPO application under either the Banjul or Harare Protocols.

Applications are filed either with the ARIPO office or the Industrial Property Office in any one of the member countries, which must then transmit the application to the ARIPO Head Office in Harare for normal processing.

The fact that either all or some of the member states can be designated in an application is another benefit of filing at ARIPO. The applicant can choose which countries they would like to apply to and by so doing they can manage their costs to an even greater extent.

Examination of applications is carried out by ARIPO’s team of examiners and usually takes between three and four years.

The costs of obtaining patent protection in any country are usually high but regional systems such as ARIPO make the registration of patents far more affordable. Furthermore, the Harare Protocol is well administered with high-level support from the World Intellectual Property Organisation (WIPO).

Finally, as always, the proof of a good system lies in the ability of rights holders to enforce their rights. IP litigation is not common in Africa and there is not much case law on the subject. However, in the recent Kenyan case Pfizer Inc v Cosmos Ltd (Case no. 49 of 2006), Pfizer was able to successfully enforce its ARIPO patent (which designated Kenya) to prevent the manufacture and sale of an infringing product by Cosmos Ltd.

In the next article we will discuss the other regional system for protection of IP in Africa, namely the African Intellectual Property Organisation, known by the acronym for its French name, Organisation Africaine de la Propriete Intellectuelle (OAPI).

Nicky Garnett
Head of Africa Practice
Nicky-g@adamsadams.co.za

This article was published in DESIGN> magazine 13 http://www.designmagazine.co.za/pages/852914247/designmag-issues/latest-issue.asp