Anti-counterfeit and Brand Protection in Africa – It all begins with brand owners
Earlier this year, South African event organizer Everest Executive Education convened a conference named “Pan-African Anti-Counterfeit and Brand Protection Summit” the aim of which was to discuss the danger of counterfeits for consumers, the damage caused to trademark owners and the progress made so far by different countries in adopting legal and administrative measures enabling brand owners to fight counterfeiters.
The conference was attended by government officials, policy makers, custom representatives and lawyers from different African countries, who were actively involved in discussions and gave a valuable perspective on the issue. Moreover, such broad participation and involvement of public authorities is a proof of ongoing efforts to curb counterfeits in the continent.
One thing is clear: while the danger of counterfeited goods circulating in the market is rather evident (medicines having no healing properties, dysfunction of medical devices, toys made from toxic materials etc.), preventing them from entering this market remains complicated. This is especially true where brand owners are reluctant to put up a fight and defend their rights.
Border controls which are widely available in Africa, are not effective unless brand owners themselves are willing to take initiative to protect their rights. They have to solicit themselves assistance from custom authority and not vice-versa. However, before having customs on your side, brand owners must first demonstrate that it is a legitimate proprietor of a particular trademark. At this stage it is important to point out that although certain national authorities may be satisfied with trademark registrations abroad, others are more demanding and would require a proof of trademark registration in the country concerned.
In addition to border controls, there is a possibility to raid the market place. Brand owners suspecting or having evidence of counterfeits can lodge a complaint before relevant authorities such as police or dedicated national agencies and commissions (Anti-Counterfeiting Agency in Kenya, Fair Competition Commission in Tanzania etc.), which would then conduct investigation on a market place. But here again it is up to the brand owner to file the complaint, based on the prior registered rights, and to inform the authorities of possible counterfeits circulating in the market.
Therefore, trademark registration is the foremost step towards fighting/preventing counterfeits of one’s mark. It is nevertheless unnecessary to register one’s trademark in every country of the continent to effectively deal with counterfeits. Actually, brand owners can successfully prevent/reduce counterfeited goods if the geographic scope of their trademark protection is defined strategically by taking into consideration all the relevant factors such as the place of business operation or product distribution, location of main African ports, transit countries and other.
Once the trademark is registered, the owner can refer to relevant national authorities and seek their assistance who can order investigations, seizures and eventually destruction of fake products.
Surely trademark enforcement in Africa is challenging, but given the incremental economic development of African countries as well as increasing purchase power of consumers, it would not be wise for brand owners to leave this untapped market for those who do not play fairly.
Do not hesitate to contact INLEX AFRICA (firstname.lastname@example.org) for further assistance, it will be our pleasure to assist you.