IP Litigation in Africa

• Author: Darren Olivier
• Position: Head of Brand Enforcement, Bowman Gilfillan, South Africa
• Pages: 14-15

Africa, a continent of 54 countries, with a popula-

tion of around one billion, produces relatively few

reported cases of IP-related disputes. Apart from a

steady stream of IP decisions emanating from

South Africa, there is a dearth of information from

the rest of the continent and such information, if

and when available, tends to reach only those in

the know. Most IP practitioners are, therefore, un-

aware of how IP is enforced on the continent. As a

consequence, IP investment in Africa has been

treated with some apprehension, or there has been

an assumption that effective IP rights enforcement

is not a prerequisite for doing business there.

However, there is evidence that this is changing.

Online media, such as

Afro-IP

, World Trade Mark

Review, Managing Intellectual Property and the

WIPO Magazine, have stepped up efforts to facili-

tate access to information on the IP situation in

Africa. The cases below are but a few of those that

have recently come to light. Whether it is that

more is now known about African IP rights en-

forcement or that its effectiveness is improving is

not altogether clear. However, one thing is certain

– that IP dispute resolution is alive and well in most

economically vibrant economies on the continent.

Ethiopia’s coffee

In an IP dispute with Starbucks over U.S. registra-

tion and use of trademarks for its premium coffee

beans, Ethiopia recognized an opportunity to ne-

gotiate with the company and settled the dispute

in an innovative way that may have long-term

benefits for its people. Instead of attempting to ex-

tract cash in the form of royalty payments, the set-

tlement aimed to increase Ethiopia’s brand recog-

nition and the demand for its coffee beans in a bid

to generate future wealth for the country.

According to the settlement, Ethiopia will select

the global distributors for its coffee and set the

conditions for sale. Ethiopia charges no royalty fees

for coffee distribution licenses but, in return, asks

distributors to market each type of coffee under its

particular brand name. (See “Making the Origin

Count: Two Coffees,” WIPO Magazine 5/2007.)

South Africa – Trademarks

on the front line

No less than four trademark cases reached the

Supreme Court of Appeal, South Africa’s high-

est commercial court, in 2009, and a significant

number of other cases appeared in the law re-

ports of the High Court. This is indicative of the

ongoing healthy debate on IP issues in South

Africa, where information on IP enforcement in

the country has become increasingly accessi-

ble, in particular in the areas related to coun-

terfeiting and domain names.

In 2010, the country will be hosting the FIFA

World Cup football tournament, whose revenues

directly depend on the country’s ability to ade-

quately protect the IP rights of its official spon-

sors. There have already been a number of cases

of international brand owners effectively enforc-

ing the ambush marketing provisions of the

Merchandise Marks Act 1943, as amended. (See

“Defending its turf: FIFA combats Ambush

Marketing,” WIPO Magazine 4/2009.)

No passing off in

Namibia

The strength of Namibia’s IP system was tested

recently in the passing off case of Guido-Dirk

Gonschorek and Others v Asmus and Another

(SA 11/2007) [2008] NASC 3 (15 April 2008). The

case arose after Asmus sold part of its ASCO

branded business (car hire, panel-beating, prop-

erties and yacht chartering) to Gonschorek.

Asmus sued successfully both on the grounds of

passing off and under the Close Corporation Act

IP LITIGATION

IN AFRICA

FEBRUARY 2010

14

This article by Darren Olivier, Head of Brand Enforcement, Bowman Gilfillan, South Africa, highlights

some of the more recent IP dispute developments across the African continent. Mr. Olivier is a co-founder

of the

Afro-IP

blog, which publishes regular articles and updates on IP in Africa.

IP LITIGATION COSTS

Some 15 million people in Ethiopia depend on the coffee sector, which generates

60 percent of the country’s export earnings.

Courtesy USAid

Courtesy EIPO