Africa IP highlights 2020 #2: The trademarks arena

Yesterday, the IPKat launched an “Africa IP Highlights 2020 series” of posts to highlight some of the key developments in IP in Africa in 2020. The first post of the series, "The copyright field" is available here.

As stated in the first post on this series, the series is the result of collaboration between myself and several IP practitioners and researchers across Africa (in alphabetical order): Caroline Wanjiru (Centre for IP and IT Law, Strathmore University, Kenya); Chinasa Uwanna and Ekene Chuks-Okeke (Banwo & Ighodalo, Nigeria); Marius Schneider and Nora Ho Tu Nam (IPvocate Africa, Mauritius); Vanessa Ferguson (Ferguson Attorneys, South Africa).

Today, it’s the turn of trademarks.

Courtsey of GuestKat, Rianna Harvey

In January, the Tunisien Patent and Trademark Office (INNORPI) issued Decree no. 29/2020, in which it announced a 100% increase in official trade mark fees.

February saw the launch of AfrIPI - the EUIPO's first IP-focused project that collaborates with African countries. According to the EUIPO, "the overall objective of AfrIPI is to facilitate intra-African trade and African and European investment. It specifically aims to create, protect, utilize, administer and enforce Intellectual Property Rights across Africa, in line with international and European best practices and in support of the African Continental Free Trade Area (AfCFTA) and the African Union´s Agenda 2063". In addition to the European Commission and the EUIPO, the other project partners are the African Regional Intellectual Property Organisation (ARIPO), the African Intellectual PropertyOrganisation (OAPI) and the African Union Commission.

In April, the High Court of South Africa (Guateng Division) dismissed the claims for trademark infringement and unlawful competition against Liberty Group Limited. Discovery Limited, Discovery Life and Discovery Vitality (the “applicants”) had instituted an action against Liberty alleging that Liberty’s linking of its insurance offering to Discovery Vitality’s wellness programme, amounted to trademark infringement and unlawful competition. See this Katpost for comments on the judgment. Also in April, the Supreme Court of Appeal (“SCA”) in South Africa handed down judgment in the case of Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd and Another. This matter dealt with infringement of a registered trademark, passing-off, copyright infringement and counterfeiting. The court held that there was trademark infringement as the likelihood of deception or confusion existed between the mark used by the respondent and the appellant. In respect of passing off, the court held that there was passing off in relation to all the packaging used by the appellant. In respect of copyright, the court held that copyright was only infringed in the initial and the new packaging and not the future packaging. The claim here was that the logos were artistic works and the appellant’s use of the logos and packaging was an adaptation.

In May, the Government of the Republic of Mozambique deposited its Instrument of Accession to the Banjul Protocol on Marks with the Director General of ARIPO. In accordance with the provisions of the Protocol, the latter will enter into force, with respect to the Republic of Mozambique, on 15 August, 2020. As Mozambique’s Industrial Property Code of 2015 already makes provision for the recognition of ARIPO registrations, Mozambique is now eligible for designation, bringing the number of Member States party to the Protocol to 11.

In September, South Africa’s Supreme Court of Appeal judgement in Milestone Beverage CC and Others v The Scotch Whisky Association and Other was handed down electronically. The court dismissed the appeal and interdicted the companies from selling products, namely ROYAL DOUGLAS and KING ARTHUR, purporting to be whisky or whisky flavoured. The subject of the appeal, concerns the manufacture and distribution by the appellants, who are related entities, of two alcoholic beverages. But for the differing get-up, the products, which have been produced in the same production process, are in all respects identical. Also in September, Mauritius became the 20th country to join the ARIPO. However, even though Mauritius acceded to the Lusaka Agreement, it has yet to sign any of the protocols, including the Harare Protocol for Patents, Utility Models and Designs, the Banjul Protocol for Marks, the Swakopmund Protocol for Indigenous Biological Resources and Traditional Knowledge and the Arusha Protocol for Plant Breeders' Rights. In order to implement these treaties, Mauritius will need to amend its existing legislation adopted in 2019.

In November, certain annexes to the revised Bangui Agreement (i.e. the Agreement Relating to the Creation of an African Intellectual Property Organization [OAPI], done at Bangui) came into force. These Annexes are Annex VI on Geographical indications; Annex VII on Literary and Artistic property, Annex VIII on Protection against unfair competition and Annex X on Plant varieties. Also in November, the federal government of Nigeria ratified Nigeria's membership of the African Continental Free Trade Area (AfCFTA). IP is one of the 3 items currently under negotiation in Phase II of the AfCFTA Agreement. Wend Wendland, adjunct professor at University of Cape Town's IP Unit shares initial thoughts on the Draft IP Protocol here. Even though the AfCFTA Agreement aims inter alia to promote intra-African trade, Nigeria’s land borders closed in 2019 as part of government’s efforts to check smuggling and other illicit cross-border activities have remained closed until recently. The President of Nigeria on 16 December 2020 approved the reopening of four land borders, namely: Seme in the South-west part of the country, Ilela in the North-west part of the country, Maitagari in the North-west part of the country and Mfun in the South-south part of the country. The remaining borders are to be reopened on or before 31 December 2020.

 

The Trademarks Registry in Nigeria deserves honourable mention: Despite shutting down during the 5-week government ordered lockdown and working with a limited number of staff thereafter (in compliance with Covid-19 protocols), the Registry in Nigeria issued 6 trademark journals this year and migrated to a new online portal.