Legislative and Administrative Developments Advance Protection of IP Rights in Africa in 2023

INTA’s Africa Global Advisory Council advises the Association’s leadership on the implementation of its Strategic Plan in Africa, raises relevant intellectual property (IP) issues in the region, provides feedback on substantive policy issues and activities to support the Association’s regional advocacy, and supports membership recruitment efforts. To summarize IP developments in the 59 countries and surrounding islands that make up Africa is no easy task, particularly in an eventful year that has seen many changes to IP office practice, law, and policy. Here, we provide a summary of the notable highlights from across the continent.

Positive legislative developments in Egypt include the issuance in August of the new Egyptian Authority for Intellectual Property (EAIP). The EAIP, which is expected to open within 12–18 months, will aim to centralize IP protection in Egypt.

Ghana has announced its plans to introduce a new Ghana Industrial Property Office (GIPO). The GIPO will administer the use and protection of patents, trademarks, industrial designs, geographical indications, and plant varieties.

Trademark reservations are once again available in South Sudan as the country awaits the eventual passing into law of the Intellectual Property Bill, first published in 2015. The Bill aims to introduce a new trademark registration system following South Sudan’s independence in 2011. Up until 2017, brand owners could “reserve” their marks so that a third party could not register a similar mark once the new law had become effective, but the system was suspended. Fortunately, the Ministry of Justice and Constitutional Affairs has now restarted the reservation system to allow brand owners to reserve their marks. Brand owners may wish to take this opportunity to review their portfolios for any additional marks they may wish to reserve.

Unfortunately, political unrest continues to affect the operations of certain IP offices. In Sudan, a military coup forced the closure of the Trade Marks Registry, which will likely lead to significant delays in processing once it reopens.

On a positive note, Libya’s Trade Marks Office resumed normal operations in May, following a period of unrest during which the Office was closed or only offered limited services. Foreign brand owners are once again able to register and renew their trademarks, although filing receipts are not currently being issued and there are significant backlogs with processing.

Positive legislative developments in Nigeria include the signing into law on March 24 of the Copyright Act 2023. Introducing a voluntary registration system as well as anti-piracy and anticounterfeiting measures, the Act provides for collective management and the protection of performers’ rights and the modernization of the country’s copyright legislation. Nigeria also introduced the Business Facilitation (Miscellaneous Provisions) Act, which came into effect on February 8. The country introduced a range of amendments to existing legislation, including the Trademarks Act. A definitions section covers the term “goods,” clarifying that the term “goods” also includes “services.” This should settle any debate and uncertainty around the enforcement of service marks in the country.

In South Africa, a recent decision by the Supreme Court of Appeal (SCA) brought some clarity to the trademark anti-dilution provisions. The SCA held that these provisions, in both opposition and infringement proceedings, are not limited to enquiries related to non-similar goods or services and can be relied on in matters involving marks used in relation to the same or similar goods or services. Previous rulings by High Courts on the subject had suggested that the anti-dilution provisions could only be relied on in enquiries related to non-similar goods or services. The SCA also confirmed that, when relying on the anti-dilution provisions in opposition proceedings, evidence of an actual unfair advantage or detriment is not required and only a likelihood (or reasonable probability) of unfair advantage or detriment need be shown. This is a relief for well-known mark owners, as at the time that opposition proceedings are launched, concrete evidence of unfair advantage or detriment may well not yet have emerged and cannot be produced by the opponent.

On the anticounterfeiting front, a notable development this year is the implementation of a mandatory IP rights recordal system in Kenya, requiring brand owners to record their IP rights with the Kenyan Anti-Counterfeit Authority (ACA). This secondary recordal is seen by the ACA as being pivotal in the fight against counterfeiting in the region and is aimed at promoting legitimate trade and proactively protecting IP rights through the verification of imports. A deadline of January 1, 2023, was initially set for these recordals with the ACA, but it has since been extended informally without any fixed deadline. Brand owners are nonetheless encouraged to proceed with the necessary recordals as soon as possible, as exporting goods to Kenya without first recording the IP rights will become a criminal offense.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2023 International Trademark Association